Many brand owners operating in the world of fashion clothing will be delighted to hear of the outcome of a recent case involving Karen Millen.
In summary, Karen Millen designed and sold in Ireland a striped shirt and a black knit top. Dunnes, an Irish retailer, made copies of the items, which it then sold in its Irish stores. Karen Millen sued Dunnes for Community unregistered design infringement before the Irish Courts.
Dunnes admitted copying the designs, but asserted that the designs did not qualify for protection as they did not have ''individual character'', as required by the law. This states that a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public prior to the date on which the design for which protection is claimed has first been made available to the public.
Dunnes argued that, when assessing whether a design has individual character, a Court must be free to consider not only a individual design which has previously been made available to the public, but also any combination of design features taken from more than one previously available design. Dunnes also argued that the burden was on Karen Millen to prove that the designs had individual character.
The Irish Supreme Court decided to refer the matter to the Court of Justice of the European Union ("CJEU"), for guidance on these important questions of law.
In a victory for both Karen Millen and common sense, the CJEU held that 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 not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.
In other words, it would not be right to refuse protection for a design where that design could be created by merging together a combination of individual features taken from a number of earlier designs. Protection should only be refused where the overall impression of the design did not differ from the overall impression produced by a single (earlier) design.
The CJEU also held that Karen Millen did not have the burden of proving that the designs in question had individual character, merely of indicating what, in its view, were the elements of the designs that constitute the individual character of the designs. It was then up to Dunnes to contest whether those elements did give the designs individual character, when compared to earlier designs.
In conclusion, this decision should make it harder for those copying the designs of others from avoiding liability for design infringement.