The Court of Justice of the European Union (CJEU) has issued a decision on unregistered design right (UDR) which will be greeted with relief by designers, providing clarification on how the concept of “individual character” should be assessed and confirming where the burden of proof lies.
The decision involved a dispute between fashion design and retail firm Karen Millen Fashions (KMF) and Irish retail chain Dunnes (See case C-345/13 Karen Millen Fashions Limited – v – Dunnes Stores (Limerick) Limited).
In 2005 Dunnes copied certain garments produced by KMF and marketed them. KMF brought proceedings for infringement of Community UDR in the Irish High Court. Dunnes conceded novelty and admitted copying, but challenged the validity of the UDR for lacking individual character. In particular, Dunnes suggested that the KMF garments combined features of various earlier designs made by other designers, and also argued that the burden of proof lay on KMF to show the designs did possess individual character.
The Irish High Court disagreed and Dunnes appealed to the Irish Supreme Court, which then looked to the CJEU for guidance on two issues relating to individual character. Firstly, when assessing individual character, should the overall impression of a design be considered with reference to any individual earlier design, or any combination of known features for more than one earlier design? Secondly, does the holder of the UDR have to prove that the design does possess individual character?
In response to the first question, the CJEU confirmed that for a design to possess individual character, the overall impression which it produces on an informed user must differ from that produced by one or more earlier designs, when those designs are taken individually. It is not appropriate to mosaic together features taken in isolation from a number of earlier designs.
Regarding the second question, the CJEU confirmed that there is a presumption of validity of a Community UDR. Therefore, the holder of the UDR is required to identify the date from which the design is protected and to indicate what is believed to constitute the individual character. However, the right holder is not required to prove that individual character exists. It is up to a challenger to show that individual character does not exist.
The decision provides welcome guidance on the assessment of individual character and greater certainty for designers wishing to rely on UDR. For those challenging unregistered design right, the hurdles they will need to overcome are more clearly laid out.
For further information, please contact Sarah Merrifield or your usual Boult Wade Tennant adviser.