Advocate General weighs in on Karen Millen design case
Advocate General Melchior Wathelet of the Court of Justice of the European Union (CJEU) has weighed in with his views in the latest round of the seven-year legal fight between clothing retailers Karen Millen and Dunnes Stores.
In the latest development in this long-running case, he has made recommendations on how to interpret the relevant regulation on unregistered community design rights.
Fashion brand Karen Millen launched proceedings against Dunnes in 2007 after the Irish store chain sold copies of a striped shirt and black knit top made by Karen Millen.
Karen Millen argued that it held the unregistered community designs relating to the garments, and called for an injunction against Dunnes.
After the Irish High Court upheld Karen Millen’s action, Dunnes appealed against the decision to the Supreme Court.
While Dunnes did not dispute that it had copied the garments and acknowledged that Karen Millen’s unregistered community designs are new designs, it did not agree that Karen Millen holds an unregistered community design for each of the garments at issue, and argued that the garments do not have the “individual character” required by the regulation.
The court decided to stay the proceedings and referred two questions to the CJEU for a preliminary ruling.
The first question concerned whether any individual design that has been previously made available to the public, or any combination of known design features from more than one such earlier design, may be said to have individual character.
The second asked whether the right holder bears the burden of proving that the design has individual character.
Wathelet agreed with interpretations suggested by Karen Millen, the UK government and the European Commission, and found that in order for a design to be considered 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 and viewed as a whole, not by an amalgam of various features of earlier designs.”
He added that the right holder needs only to prove when the design was first made available to the public and indicate which elements give it individual character.
Lee Curtis, a partner at Harrison Goddard Foote, described the AG’s opinion as a “major victory” for the fashion industry, particularly fashion designers.
“Many distinctive clothing designs are based on individual design elements taken from history and then combined to create a new design. In many ways that is the whole basis of the fashion industry,” he said.
“This opinion would appear to signal that the CJEU is likely to safeguard this key foundation of the fashion industry.”
Rebecca Field, a trademark attorney also at Harrison Goddard Foote, said: “There are to a degree only so many individual design elements which can be created in fashion.
“If one could not argue that a combination of design elements creates a new design, then the legal protection afforded fashion designers would have been significantly weakened.”
Neither Karen Millen nor Dunnes responded immediately to WIPR’s requests for comment.
