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CJEU adviser provides fillip to owners of unregistered designs

The Advocate General has issued his opinion in a dispute that will clarify the rules on unregistered Community design rights

AG Wathelet has made a recommendationto the Court of Justice of the EU about how it should rule in a case 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 IrishSupreme Court, which referred two questions to the CJEU.

The questions are:

1. In consideration of the individual character of a design which is claimed to be entitled to be protected as an unregistered Community design for the purposes of [Regulation No 6/2002], is the overall impression it produces on the informed user, within the meaning of Article 6 of that regulation, to be considered by reference to whether it differs from the overall impression produced on such a user by: (a) any individual design which has previously been made available to the public, or (b) any combination of known design features from more than one such earlier design? 2. Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of [Regulation No 6/2002] where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character in accordance with Article 6 of that regulation?’

In submissions to the Court, the UK government and the European Commission backed Karen Millen’s contention that it is the overall impression of the designs taken individually that is important.

The Advocate General said today he agrees.

“I concur ... that, in order for a design to be regarded as having 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, rather than by a combination of features drawn from several designs previously made available to the public.”

On the second question, AG Wathelet recommended that the Court rule that for a Community design court to treat an unregistered Community design as valid, the right holder only needs to 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.

To require the holder of an unregistered Community design to produce proof of the individual character of his design would seem to run counter to the intention of the legislation, said AG Wathelet.

The fashion industry certainly moves faster than the courts. It has taken eight years since Karen Millen filed its lawsuit for the dispute to move through the Irish courts and over to Luxembourg for today’s opinion. The Court of Justice of the EU is now expected to issue a answer the Irish Supreme Court’s questions, before the Dublin-based judges take their final decision.

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