Karen Millen has won its epic war against Dunnes Stores over the copying of a jumper and two shirts. It was a case that helped define the fashion law landscape. Karen Millen’s 2007 case against Irish chain store Dunnes Stores was the first case involving clothing to be taken under the community unregistered design right regulation, which had come into effect across the EU in 2002. Seven years later and the case has reached the European Courts – and Karen Millen has won! Yesterday, the European Court of Justice, handed down its judgement.
Back in April, the Irish Supreme Court had ruled that;
1) Article 6 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs is to be interpreted as meaning that, in order for a design to be considered 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 and that;
2) In order for a Community design court to treat an unregistered Community design as valid, for the purposes of Article 85(2) of Regulation No 6/2002, 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.
The Supreme Court had referred the case to the ECJ to confirm whether it was obliged to treat a design as valid where the alleged right holder had merely indicated what constituted its “individual character” rather than established that character as a “matter of fact”.
The unregistered design right gives protection to a design for a period of three years from the date it is first made public within the EU. There is no registration period required. Design is defined as “the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.
In making her 2007 ruling, Ms Justice Mary Finlay Geoghegan found Karen Millen’s designs had an individual character. She said the court should have regard to the colour, texture and material used in the garments. She said they would create a different overall impression on someone who knew about fashion to designs that had been on sale in previous years. It was established early in proceedings that Dunnes had produced the clothes in question by copying the plaintiff’s designs. The defense argument that the Karen Millen shirts and sweater lacked “individual character” and failed “to produce on the informed user a different overall impression” from other similar garments. Therefore the Karen Millen designs which they had copied were not protected by Unregistered Design Rights. The court rejected the argument put forward by Dunnes Stores and held that Dunnes had infringed Karen Millen’s design rights.The judge reminded the parties that the question before the court was not whether “hypothetical husbands” would recognise the difference.
Dunnes’ reluctance to accept the Irish court’s ruling and spend millions on further litigation was baffling. At the time they were selling the shirts in question, a young Wigsandgowns was training as a lawyer and supporting the endeavour through a weekend job at Karen Millen. Needless to say few wage packets ever made it out of the shop such was the lure of Karen Millen’s clothing range including said shirt at the centre of the current dispute. A distinct memory of returning from work and passing the window of Dunnes Stores only to see a replica of the Karen Millen shirt that had swallowed half our wages stands out. We were stopped in our tracks, outraged that Dunnes,Dunnes, was selling our shirt. (For those of you unfamiliar with Dunnes Stores, it is the HEIGHT of unsophistication, frequented by mammys doing the weekly grocery shop and little old ladies searching for frumpy brown cardigans. A bit like BHS).The fact the likeness of the shirt could stop someone dead in their tracks is surely indication enough that the clothes DID have individual character and created an overall impression? Dunnes were fighting a losing battle.
Reports suggest that there has been a 50% increase in the number of unregistered design rights disputes in the fashion industry over the last few years. The right is one of the most effective methods of providing protection to fashion designers. There is no need to register a design and so costs are kept to a minimum – something imperative for designers starting out. We’re delighted to see the ECJ rule in favour of Karen Millen and see the unregistered design right enforced as a real and effective method of protecting fashion designs!