(CJEU, Judgment of 19 June 2014 in Case C-345/13, Karen Miller Fashions v Dunnes Stores)
The assessment of whether a Community design has individual character must be based on whether or not the design produces a different overall impression to the prior art with reference to earlier designs taken individually, and not to a combination of features taken in isolation from several different designs.
Karen Millen Fashions (“KMF”), a UK high street fashion retailer, designed and placed on the market a striped shirt (and other products). Representatives of Dunnes Stores (“Dunnes”), an Irish retail chain, bought and copied these garments to put them on sale in Dunnes’ Irish stores. KMF brought proceedings before the Irish High Court to obtain damages and an injunction to stop Dunnes using its designs in which it claimed unregistered Community design rights under the Community Design Regulation (“CDR”). After the High Court found in KMF’s favor, Dunnes appealed the decision to the Irish Supreme Court. Dunnes did not deny that it copied KMF’s designs; it argued that the designs lack individual character. Having regard to Dunnes’ arguments, the Irish Supreme Court stayed the proceedings to ask the CJEU whether the individual character of a design must be assessed by reference to one or more earlier designs taken individually or by reference to a combination of features taken in isolation and drawn from a number of earlier designs. Moreover, the Court asked where the burden of proof lies in establishing individual character in infringement proceedings involving unregistered Community designs.Judgment
The CJEU clearly held that the assessment of whether the design at issue produces a different overall impression on the informed user, as compared to the prior art, should be conducted with reference to one or more “specific, individualized, defined and identified designs” previously made available to the public and not to a mishmash of features taken from numerous designs. Where the design is compared to the prior art indirectly and on the basis of an imperfect recollection, the comparison would not be based on a recollection of specific features from several different earlier designs but rather of specific designs. The CJEU noted that, although Art. 25(1) of the TRIPS Agreement provides for a combination of design features to be assessed, this provision was optional and was not incorporated in the CDR.
With regard to the burden of proof in infringement proceedings, Dunnes argued that KMF should be required to prove that its unregistered Community designs are valid, including that there is no relevant prior art. The CJEU rejected this argument and pointed out that it is clear from both the title (“presumption of validity”) and the wording (“indicates what constitutes the individual character”) of Art. 85(2) CDR that the right holder need only indicate which features it considers give its design individual character. The reason for this requirement is that, in the absence of a registration, it is necessary for the right holder to indicate what it considers to be the protected features of its design. Requiring the right holder to prove the absence of relevant prior art in this context would not be compatible with the objective of simplicity and expeditiousness underpinning the idea of the protection of unregistered Community designs. Furthermore, it would render the defendant’s ability to contest a design’s validity by way of a counterclaim or plea obsolete.
Holders of Community designs will appreciate that the CJEU clarified that, when assessing the individual character of a Community design, the prior art is always a single product or design and not a mosaic of different elements from various designs. Especially for the fashion industry, this judgment will be a welcome clarification, given that it is common practice for that industry to use a combination of previous designs as a starting point for creating a new one