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Design law update – A boost to EU unregistered design right

Design law update – A boost to EU unregistered design right

This article looks at the latest development in the field of design law, the recent CJEU decision in Karen Millen Fashions -v- Dunnes Stores[1], in which the CJEU has given guidance on the interpretation of the Community Design Regulation[2] in the context of a fashion dispute.

The scheme of design protection under English law

English law currently has at least five rights enabling the protection of industrial designs.  These are as follows:-

  • UK registered design right;
  • UK unregistered design right;
  • Copyright in relation to artistic works applied industrially;
  • Community registered design right; and
  • Community unregistered design right.

Some of the features of these rights are summarised in the tables below:-

Some differences between UK Registered Design protection under the 1949 Act (as amended) and UK Unregistered Design protection

No.

UK Registered Design Right

UK Unregistered Design Right

1

Subject to official formalities at Designs Registry.

Arises automatically subject to qualification.

2

Registrable at Designs Registry.

Not registrable.

3

Must be novel.

Need not be novel but a requirement of “original” creation; must be created independently and not be “commonplace”.

4

Infringement does not require copying.

Infringement requires copying.

5

Maximum term 25 years.

Maximum term 15 years.

6

Governed by Registered Designs Act 1949 as amended.

Governed by Part III of CDPA.

7

In general the rights granted can overlap with unregistered rights.

In general the rights granted can overlap with registered rights.

Some differences between EU Registered Design protection and EU Unregistered Design protection under Regulation 6/2002/EC (Community Design Regulation)

No.

Community Registered Design Right

Community Unregistered Design Right

1

Subject to official formalities at the Office for Harmonization in the Internal Market (OHIM).

Arises automatically subject to qualification and made available to public.

2

Registrable at OHIM.

Not registrable.

3

Must have “individual character”.

Must have “individual character”.

4

Must be “new”.

Must be “new”.

5

Exclusive right to use; does not require copying to infringe.

Infringement requires copying.

6

Maximum term 25 years from filing date.

3 year term from date when design first made available to public.

7

Rights granted can overlap with unregistered rights.

Rights granted can overlap with registered rights.

Karen Millen Fashions

The recent decision in Karen Millen emphasises the importance of Community unregistered design right.

Until the decision in Karen Millen, it had been unclear what the overall scope of protection under Community unregistered design right was.

By contrast with UK unregistered design right, Community unregistered design right is largely a short term temporary method of obtaining protection.  In particular, the term of protection was three years as opposed to the maximum potential term of protection of 15 years in the case of UK unregistered design right.[3]

Karen Millen was an appeal from the Irish Supreme Court relating to the existence of unregistered design right protection on items of fashion clothing and in particular whether under Article 6 of Regulation 6/2002 (which governed EU design rights), it was necessary to show that the designs in question had “individual character” and what was meant by “individual character”.

Karen Millen Fashions Limited, a well-known British clothing retailer, claimed infringement of its unregistered design rights in three items of clothing by Dunnes Stores, a large Irish retail chain.  The High Court of Ireland found for Karen Millen and granted an injunction restraining Dunnes Stores from using the designs and also awarded damages.

Dunnes Stores did not deny that it copied the Karen Millen designs but appealed to the Irish Supreme Court on the grounds that the items of clothing, the subject of the action, did not have “individual character” as required by Article 6 and further that the burden of proof was upon the Claimant, Karen Millen Fashions, to prove that the design had “individual character”.  These two questions were referred by the Irish Supreme Court to the CJEU.

  1. The Court had to decide whether Article 6 should be interpreted as meaning that the overall impression which the design produced on the informed user must be different from that produced on such a user by:-
    • one or more earlier designs made available to the public, taken individually and viewed as a whole, or
    • a combination of features of those earlier designs taken in isolation from the whole design.

The Court found that there was nothing in the wording of Article 6 of the Regulation to support the view that the overall impression must be produced from an amalgamation of features of different designs.

The Court considered that the effect of the use of the words “any design” in the phrase “overall impression produced on the informed user by any design” supported the interpretation that Article 6 prescribed an assessment of “individual character” against “specific, individualised, defined and identified designs from among all the designs which had been made available to the public previously”.

The Court held that the test was in line with previous case law so that where possible the informed user was required to make a direct comparison between the designs in contention.  The earlier designs must be viewed as a whole on an individual basis and not by isolating specific elements or design features.  Even in cases where a direct comparison is not possible, an imperfect recollection of the overall impression produced by those earlier designs is not to be based upon isolated features of those designs but on the designs as a whole.

  1. The second question asked was whether Article 85(2) of the Regulation required a design right owner to prove that the design has individual character within the meaning of Article 6 (as proposed by Dunnes Stores) or whether the right holder need only indicate what constitutes the “individual character” of the design.

It was held that the Regulation only required the rights holder to identify those elements of the design that constituted its “individual character”.

In particular, there was a presumption of validity of an unregistered design right in the heading of Article 85 which was wholly incompatible with an interpretation that required the design right owner to prove that the design has “individual character”.  Further such an obligation would have the effect of rendering meaningless the provision in Article 85(2) for a declaration of invalidity in favour of a Defendant who successfully contests the validity of the design.

The Court was swayed by the objective of the Regulation set out in recital 16 and 17 of the Regulation which is to protect unregistered design rights in a “simple and expeditious manner”.  This objective could not be fulfilled if the interpretation proposed by Dunnes Stores was followed.

Comment

The judgment is to be welcomed by owners of EU unregistered design rights.  This is on the basis that comparing earlier whole designs provides a simpler basis on which a design right holder must prove “individual character” thereby referencing the design to an amalgamation of various elements of earlier designs.  The Court also found in favour of design right holders by rejecting the suggestion that the rights owner must prove the design has “individual character” and by holding that the rights owner need only indicate the nature of the “individual character”.

Because EU unregistered design right has been regarded as something of a “Cinderella” in the pantheon of methods of protecting designs it has often been ignored particularly when UK unregistered design right, by contrast, creates a powerful unregistered right for a potential 15 year term.  In particular it should be noted that following the decisions in Ocular Sciences v Aspect Vision and Totes Isotoner v Fulton the courts have accepted that UK unregistered design right can be infringed by reference to parts only of a design.  Community unregistered design right provides a simpler means of unregistered protection even though the term is limited to three years.

There are a significant number of industries including fashion, toys and household goods where the designs in question have a relatively short commercial popularity and where a three year unregistered term of protection which does not require the costs of registration is available to provide a simple and straightforward means of protection.  It is by these industries that the Karen Millen decision is to be particularly welcomed.

By Clive Thorne


[1] Case C-345/13
[2]
Council Regulation 6/2002
[3]
Although in some cases the period of protection for UK unregistered design right can be as little as 10 years.

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