An Opinion of Individual Character: Karen Millen gains upper hand in Dunnes dispute

Apart from the concept of the "informed user", modern European design protection law has to grapple with other vague and protean notions.  One such notion -- that of a design's "individual character" -- is edging a little closer to clarification now that Advocate General Melchior Wathelet has the Court of Justice of the European Union (CJEU) his Opinion this morning in Case C‑345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, a reference for a preliminary ruling all the way from the Supreme Court, Ireland.

In short, Karen Millen Fashions designed and made some much-admired clothing for women. Dunnes, a major retail chain in Ireland, sold women’s clothing. Back in 2005 Millen designed and placed on sale in Ireland a striped shirt (in blue and a stone brown versions) and a black knit top. Someone bought the Millen garments from one of its Irish outlets, following which Dunnes made copies which it sold in Ireland in 2006 under its "Savida" label. Claiming entitlement to protection by virtue of unregistered Community design rights, Millen commenced infringement proceedings in the Irish High Court in January 2007, seeking injunctions and damages -- and won. Dunnes, which agreed that it copied the garments and conceded that the garments were new. However, Dunnes disputed that Millen was the holder of an unregistered Community design for either garment on the bases that (i) the garments had no "individual character" within the meaning of Article 6 of the Community Design Regulation (Regulation 6/2002) and that (ii) it was for Millen to prove, as a matter of fact, that the garments had individual character. The Supreme Court had no idea what to do, so it stayed the proceedings and to referred two questions to the CJEU for a preliminary ruling. In a refreshingly short Opinion, AG Wathelet concluded thus:

" Article 6 ... is to be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs.

2. In order for a Community design court to treat an unregistered Community design as valid, for the purposes of Article 85(2) of Regulation No 6/2002, the right holder need only prove when his design was first made available to the public and indicate the element or elements of his design which give it individual character".

Of course, it's too early to tell whether the CJEU will take the Advocate General's advice, though the mere fact that the court chose not with to dispense with it rather suggests that it welcomed a little guidance, but the fashion industry will be quite happy with it.  A breathlessly excited media release from Bird & Bird has already given it the thumb's-up, adding:

" ... Dunnes Stores had tried to argue that the burden of proof was on Karen Millen, and that Karen Millen had to show that the overall impression produced by its designs on the informed user differed from the overall impression produced on such a user by any combination of known design features from more than one such earlier design. This would have been significantly more difficult for Karen Millen to prove. The Irish High Court previously decided that Karen Millen's designs did differ sufficiently from the earlier designs of a grey Dolce & Gabana knit top and a Paul Smith blue striped shirt. While the CJEU does not have to follow the Advocate-General's opinion, it is a strong indication of its likely decision.

The Advocate General's Opinion will be welcomed by Karen Millen and other high end fashion designers and retailers who rely on unregistered design rights in their designs. Unregistered designs are an important IP right for the fashion industry, given the short lives of fashion designs which may not justify the cost of design registrations. The Advocate General's Opinion, if followed by the CJEU, will bolster the protection afforded to designs which are new and have individual character, and require lower-end, 'fast fashion' retailers to take even greater care when producing similar designs for sale at a lower price point, given the high threshold for challenging the validity of unregistered design rights".

RTE News "Karen Millen wins latest round in Dunnes 'copying clothing' action" here
Irish Times, "Dunnes loses latest round in legal battle with Karen Millen", here