Karen Millen's Design Victory Against Dunnes Stores

Karen Millen's Design Victory Against Dunnes Stores

Karen Millen Fashions Limited (KMF) brought a case against Dunnes Stores (Dunnes) in a dispute over unregistered Community designs. Karen Millen alleged that the Irish retailer Dunnes had breached European regulations by copying two of its garments, a stripy blue and brown shirt and a black knit top.

Background

The Irish High Court backed the claim by KMF and granted relief in the form of an injunction restraining Dunnes from using the designs, and also granting damages. Dunnes appealed and said that the items of clothing did not have individual character within the meaning of the Community Designs Regulations, and further that KMF were required to prove that the design had individual character. 

Issues referred to the Court of Justice of the European Union(CJEU)

Firstly, whether it was legitimate when assessing the individual character of a design to consider the overall impression produced by:

• One or more earlier designs made available to the public, taken individually as a whole, or
• A combination of features of those earlier designs taken in isolation from the whole design.

Secondly, whether the Community Designs Regulations requires a design right holder to prove that the design has individual character, or must the right holder only indicate what constitutes the individual character and design?

What did the CJEU conclude?

Responding to the first issue the CJEU found that the design must be compared with previous whole designs taken individually.

Responding to the second issue, the CJEU held that the design right holder does not need to prove individual character in its design.  Instead, a design holder should show what constitutes the individual character of the design.

What can fashion designers take from this ruling?

Both findings support KMF and the confirmation that there is no obligation to prove individual character and the low threshold in respect of the test for individual character encourages design right holders to take action.  However, the ruling does not prevent designers from seeking inspiration from existing designs. The decision allows designers to take inspiration from different elements of various designs without infringing existing rights.