Advocate General Wathelet has issued his opinion in the case of Karen Millen Fashions Limited v Dunnes Stores, Dunnes Stores (Limerick) Limited. The opinion concerns the scope of unregistered design protection and is helpful for designers, particularly those in the fast-moving fashion industry.
Brief background
Designers in the EU benefit from a relatively new form of IP protection, known as a Community Design. The appearance of a new product, such as an item of clothing or shoe, will be protected automatically as an unregistered community design when created, provided it is ‘new’ and has ‘individual character’. No registration is needed. The designer can stop others copying the design for three years from creation. 
The dispute
Karen Millen, the well-known fashion retailer, designed and sold a striped shirt and a black knit top, which Dunnes Stores copied and began selling. Karen Millen sued in the Irish courts for unregistered design infringement. Dunnes Stores acknowledged that the designs were new and that it had copied them. However, it claimed that the garments were not protected as unregistered designs because they lacked the necessary individual character. It said that the burden was on Karen Millen to prove that the garments did have the individual character required. The Irish courts asked the Court of Justice of the European Union (CJEU) for an interpretation of the relevant law in the Community Designs Regulation. As is usual, the Advocate General of the CJEU issued a preliminary opinion in advance of the court ruling.
The opinion
The Advocate General considered what ‘individual character’ means. He said that for a design to have 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”.
In other words, the design should be looked at as a whole and compared with existing designs, also looked at as a whole. If your design produces a different overall impression from those existing designs it will have the required individual character and be protected as an unregistered design. Individual character will not be destroyed simply because design aspects of your garment appear on other existing designs. The Advocate General said:
assessment of individual character does not permit the abstraction of certain specific features from one or more earlier designs in order to create a theoretical object of comparison, that is to say, something that does not actually exist in real life”.
What is key is how your design appears as a whole when compared with what is already out there, also taken as a whole.
In addition, in infringement proceedings, a designer is not required to prove that his/her design has individual character. The designer need only prove when his/her design was first made available to the public and indicate (not prove) which elements of the design give it individual character.
Implications
The opinion is good news for designers. It is more likely that a design will have individual character (and so unregistered design protection) if, as the Advocate General recommends, it is compared as a whole with other existing designs, also taken as a whole. Few designs would overcome the individual character hurdle if they were to be held up against a theoretical comparator consisting of aspects of existing designs all put together. In addition, designers are relieved of any burden of proving that their design has individual character. It would be practically impossible to do so and prohibitive from a costs point of view. Community unregistered designs are intended to provide immediate protection for designs which have a short shelf-life (such as in the fashion industry). With that in mind, requiring designers to prove that their design has individual character when seeking to enforce their rights against infringers would be inappropriate and undermine the usefulness of this IP right.
This is a preliminary opinion and we await the CJEU ruling. There are no official statistics, but the CJEU follows the Advocate General’s opinion in around 80% of cases.
