ECJ boosts validity and enforceability of Community Designs

The Court of Justice of the European Union has today issued its eagerly anticipated ruling in case C-345/13 (Karen Millen Fashions Ltd vs. Dunnes Stores) concerning the requirement for individual character of Community Designs, which are unitary design rights covering the entire territory of the European Union.  The Court confirmed the earlier opinion of Advocate General Wathelet that a Community Design’s individual character must be assessed by reference to earlier designs, each taken individually, rather than by reference to a combination of features drawn from a number of different earlier designs.  This, we consider, must be correct, otherwise a significant proportion of existing Community Designs which build upon the existing design corpus would be invalid.  

In its ruling, the Court also confirmed that the holder of an unregistered Community Design, which arises automatically and gives a more limited protection than registered Community Designs, does not need to prove that its design has individual character, and must only identify the features of its unregistered Community Design which, in its view, give it individual character.  This, according to the Court, is consistent with the presumption of validity of all Community Designs and also the objective of simplicity and expeditiousness of protection underpinning unregistered Community Designs. This finding will give a boost to unregistered Community Designs which, whilst giving more limited protection than registered Community Designs, are nevertheless an important weapon in a designer’s armoury.   

The Court’s ruling, which concerns designs in the fashion sphere, will have a particular impact in that sector, but also in other industry sectors where the body of earlier designs is great or where the degree of design freedom is limited.  It will be widely welcomed as supporting the validity of, and facilitating the enforcement of, Community Designs. 

Factual background to case 

Karen Millen, a fashion designer and owner of unregistered Community Designs related to women’s clothing garments, filed an infringement action in Ireland in 2007 against the large retailer Dunnes Stores, seeking damages and an injunction restraining Dunnes from using Karen Millen’s designs on clothing articles. Dunnes Stores did not deny copying the garments, but disputed that Karen Millen had unregistered Community Design rights in the designs because they featured elements present in a number of earlier designs and therefore, in its view, lacked individual character. Further, they argued that it was up to Karen Millen to prove, as a matter of fact, that the designs had individual character and not up to it, as a defendant, to prove that individual character was absent.  The Irish Supreme Court referred questions to the Court of Justice on both these points pursuant to Article 267 TFEU.  Following today’s judgment, the case will now be resumed before the Irish Supreme Court.

Michael Hawkins/Zuzana Peniaskova, 19 June 2014