IP and IT Law Bytes: Community Designs Regulation: interpretation

27 August 2014

Audrey Horton

The European Court of Justice (ECJ) has ruled on two questions regarding the interpretation of the Community Designs Regulation (6/2002/EC) (the Regulation) referred to it by the Irish Supreme Court.

Background

Article 6 of the Regulation (Article 6) provides that a design will be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public.

Article 85(2) of the Regulation (Article 85(2)) provides that, in proceedings in respect of an infringement action, a Community Design Court will treat an unregistered Community design as valid if the rights holder:

  • Produces proof that the unregistered Community design has been made available to the public in such a way that, in the normal course of business, the way in which it has been made available could reasonably have come to be known to the circles specialised in the sector concerned.
  • Indicates what constitutes the individual character of the unregistered Community design.

Facts

K was an English company that produced and sold women’s clothing. D was a retailing group in Ireland that also sold women’s clothing. In 2005, K designed and placed on sale in Ireland a striped shirt and a black knitted top (the garments).

D bought the garments from one of K’s Irish outlets and then had copies made outside Ireland, which it put on sale in its Irish stores in late 2006. K brought proceedings against D for infringement of its Community unregistered design rights in the garments.

D admitted copying the garments and acknowledged that the designs of the garments were new. However, it alleged that K did not own unregistered Community design rights in relation to those designs, because:

  • The garments did not have individual character within the meaning of Article 6.
  • Article 85(2) required K to prove, as a matter of fact, that the garments had individual character, and it had not done so.

The Irish High Court upheld K’s action. On appeal, the Irish Supreme Court stayed the proceedings and asked the ECJ the following questions:

  • In consideration of the individual character of a design that is claimed to be entitled to be protected as an unregistered Community design for the purposes of the Regulation, is the overall impression it produces on the informed user, within the meaning of Article 6, to be considered by reference to whether it differs from the overall impression produced on such a user by:
  • any individual design that has previously been made available to the public; or

  • any combination of known design features from more than one such earlier design?

  • Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) where the rights holder merely indicates what constitutes the individual character of the design or is the rights holder obliged to prove that the design has individual character in accordance with Article 6?

Decision

The ECJ held that:

  • Article 6 means that, in order for a design to be considered to have individual character, the overall impression that the design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.
  • Article 85(2) means that, in order for a Community design court to treat an unregistered Community design as valid, the rights holder of that design is not required to prove that it has individual character within the meaning of Article 6, but need only indicate what constitutes the individual character of that design; that is, it indicates what, in its view, are the element or elements of the design concerned that give it its individual character.

Comment

The decision will be welcomed by holders of unregistered Community designs, which are of particular practical importance in the fashion industry, in relation to which designs may have a short shelf-life.

Case: Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd C-345/13.

First published in the August 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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