Case C-345/13, Karen Millen Fashions – establishing the individual character of the design of a striped shirt [judgment 2014, ECLI:EU:C:2014:2013]

Can a company which sells striped shirts prevent a rival from selling copies of those shirts? According to the EU’s Council Regulation (EC) No 6/2002, a design may be protected as an ‘unregistered design’ provided that it is both ‘new’, and has ‘individual character’. But how should ‘individual character’ be established?

Facts
Karen Millen Fashions is a company that makes and sells clothes. Its sells its goods in Ireland and its product range includes a couple of striped shirts, and a knitted top.

In 2006, Karen Millen Fashions found out that Dunnes Stores were selling copies of the shirts and top. Karen Millen Fashions objected to this and dragged Dunnes Stores before the Irish High Court where it claimed that Dunnes Stores were infringing Karen Millen’s unregistered Community design rights.

Dunnes Stores admitted copying the designs but it denied infringing the unregistered Community design rights. In its view, there were no unregistered Community design rights to infringe. To qualify as protected ‘unregistered designs’ under the EU’s Council Regulation (EC) No 6/2002, Karen Millen’s designs had to be both ‘new’ and have ‘individual character’ (Article 4). Karen Millen’s designs lacked ‘individual character’. Deploying the ‘individual character’ terminology of Article 6, Dunnes Stores alleged that the designs did not produce on ‘an informed user’ an ‘overall impression’ which differed from that produced by ‘any other design available to the public’. In other words, the overall impression of Karen Millen’s designs was that they were just a combination or amalgam of designs or parts of designs previously made available to the public.

Karen Millen Fashions dismissed Dunnes’ approach to the laws of evidence. It referred the Irish High Court to Article 85 (2) of the Regulation, which provides:

In proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design. However, the defendants may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity.

Consequently, Karen Millen Fashions contended that it was in keeping with the wording and purpose of Article 85(2) of the Regulation that there was a presumption of validity. Consequently, it was sufficient just to indicate that its designs were new and possessed individual character. If Dunnes disagreed, then it was open to them to counterclaim that the unregistered design rights were invalid and the onus of proof then rested on them to establish this.

Equally, Karen Millen Fashions objected to the ‘overall impression’ test as proposed by Dunnes. In its view, a comparison should not be made with parts of designs previously made available to the public but rather the comparison should be made with an actual design that had been made available to the public.

Ms Justice Finlay Geoghegan held that if the defendant submitted that a design lacked ‘individual character’ and failed the requirements of Article 6 of the Regulation, then the burden was on the defendant to prove this. The judge proceeded to look at the ‘overall impression’ created by the whole of the Karen Millen top, and the whole of the Karen Millen shirt. She compared them with actual designs that had been made available to the public, namely, an earlier design of a Dolce & Gabana grey knit top, and a Paul Smith blue striped shirt. The judge held that both the Karen Millen top and shirts differed clearly from those of the earlier designs. She refused to make a reference to the CJEU. However, her judgment was appealed to the second instance design court, the Irish Supreme Court.

Questions Referred
According to the UK IPO website, the Irish Supreme Court has asked:

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 Council Regulation (EC) No 6/2002 of 12th December, 2001 on Community designs, 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 Council Regulation (EC) No 6/2002 of 12th December, 2001 on Community designs 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?