CJEU clarifies when an unregistered Community design is valid

The Court was ruling in a dispute between clothing retailers Karen Millen Fashions and Dunnes Stores. Dunnes has already acknowledged that it ordered manufacturers to make copies of two items of clothing sold by Karen Millen stores (a blue and brown striped shirt and a black knit top). It began selling them in its own stores Ireland in 2006.

Karen Millen sued, requesting an injunction and damages. In response, Dunnes argued that Karen Millen does not hold an unregistered Community design for the two items of clothing on the grounds that they lack individual character within the meaning of Regulation No 6/2002 and that Karen Millen is required to prove, as a matter of fact, that the garments have individual character.

The dispute made its way to the Irish Supreme Court, which referred two questions to the CJEU.

Yesterday the Court ruled that the individual character of an unregistered Community design must be assessed by reference not to a combination of features drawn from a number of earlier designs, but by one or more individual designs made available to the public previously.

It said that assessment cannot be conducted by reference to a combination of features taken in isolation and drawn from a number of earlier designs.

The Court added that in infringement actions, EU law establishes a presumption of validity of unregistered Community designs so that the right holder of an unregistered Community design is not required to prove that it has individual character. Instead, the right holder only needs to indicate what constitutes the individual character of that design. The defendant may, however, contest the validity of the disputed design.

The dispute will now move back to the Irish courts for a final decision in the case.

You can read more about protecting design rights in an article by lawyers from Baker & McKenzie in Managing IP’s May issue.