In 2005, British women’s clothing retailer Karen Millen Fashions (KMF) designed and began selling a striped shirt (shown below) and a black knit top in Ireland. Representatives from Dunnes Stores, an Irish retail chain, purchased those garments, made copies, and began selling them in stores in Ireland in 2006. Naturally, a legal battle ensued, which we’ve covered below ...
First, let’s discuss the European laws that were in play here, as they differ from those in the U.S. The case centered on the interpretation of the Community Design Regulation, which relates to the protection of fashion designs. Specifically at issue was whether or not the garments in question had “individual character” within the meaning of Article 6. According to the law:
A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; (b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
Also up for discussion was Article 85(2), which states that “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.”
Now back to the battle in court. In 2007, KMF initiated infringement proceedings in the Irish High Court seeking damages and injunctions. And KMF won. But Dunnes disputed that Millen was the holder of an unregistered Community design for either garment on the basis that the garments had no "individual character" and that it was for Millen to prove that the garments had individual character.
Dunnes Stores argued that Article 6 meant that a design will not have individual character if certain features of earlier designs taken together create an overall impression that is not different from that created by the design in question. Dunnes Stores also submitted that the correct interpretation of Article 85(2) was that Millen was required to prove that the designs in issue had individual character in accordance with Article 6.
KMF, however, said that the correct interpretation of Article 6 was that a design would have individual character if the overall impression that it produced on the informed user were different from the overall impression produced by earlier designs taken separately. What’s more, Karen Millen submitted that it merely needed to indicate what constituted the individual character of the design to be in accordance with 85(2).
The Supreme Court wasn’t sure what to do, so referred some questions to the Court of Justice of the European Union (CJEU). The Advocate General issued an opinion that indicated the case should be decided in Millen’s favor. His view was 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 and viewed as a whole.” And he went on to say that “in order for a Community design court to treat an unregistered Community design as valid, for the purposes of Article 85(2) of the Design Regulation, the right holder need only 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.”
While opinions of this sort aren’t binding, they are rarely rejected. And this was no exception as the CJEU also in favor of Millen. The decision should provide confidence to retailers in Europe that they will be able to protect their designs and stop copies. The case will now go back to the Supreme Court for a final ruling.
JENNIFER WILLIAMS is a recent law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently awaiting admission to the NY State Bar. For more from Jennifer, follow her on Twitter.