The long-running dispute between British fashion house Karen Millen and the well known Irish retailer, Dunnes Stores, has moved a step closer to resolution.  “Not before time”, some might say, since the case relates to women’s clothing originally sold by Karen Millen in 2005.  Karen Millen claimed that it was the owner of unregistered Community Design Rights in three garments.  Dunnes Stores, by their own admission, copied the designs and were sued for infringement in the Irish High Court. That Court handed down its decision in 2007, finding in favour of Karen Millen.  Dunnes Stores appealed to the Irish Supreme Court, and in 2013, the Supreme Court referred questions to the Court of Justice of the European Union (CJEU).

In short, the Supreme Court asked the CJEU to rule on how so-called “individual character” of a design is to be assessed. One of the criteria to be met for a design to be valid is that it must possess individual character.  This criterion is met if the design produces on the informed user a different overall impression to that produced on such a user by any design which has been made available to the public before the effective date of the design, taking into account the degree of freedom of the designer in developing the design.  The Supreme Court asked whether in order to decide on individual character, the Court may take into consideration only an individual prior design; or whether it should consider any combination of known design features from earlier designs.

The Supreme Court also asked whether, in proceedings where the validity of the Community right is put in question, the onus to prove that the protected design possesses individual character over the prior design rests on the right holder or on the party claiming that the design does not have individual character.

Today, Advocate General Wathelet of the CJEU issued his opinion on the questions referred and said:

1) 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

2) in order for a Community design court to treat an unregistered Community design as valid,  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.  Thus, it is up to the party claiming that the design is invalid because it lacks individual character to prove that there is an earlier design which produces on the informed user an effect which does not differ from that on the design in question.

We await with interest the next act of this drama, namely the issuance of the final decision of the CJEU.