CJEU follows Opinion of Advocate General - Karen Millen Fashions Limited v Dunnes Stores, Dunnes Stores (Limerick) Limited

26 June 2014


Karen Millen Fashions designed and placed on sale garments which were copied and sold by Dunnes Stores in the Republic of Ireland, resulting in the former commencing infringement proceedings in the Irish High Court in January 2007 against the latter.

While Dunnes Stores conceded that they copied the garments, they disputed that Karen Millen was entitled to protection of them by virtue of unregistered Community design rights. Dunnes argued that the garments lacked "individual character".

The Irish High Court ruled in favour of Karen Millen; and Dunnes Stores appealed to the Irish Supreme Court. The latter referred two questions to the CJEU for a preliminary ruling.

The Referred Questions

The questions were:

  1. In consideration of the individual character of a design which is claimed to be entitled to be protected as an unregistered Community design for the purposes of [Regulation No 6/2002] is the overall impression it produces on the informed user, within the meaning of Article 6 of that Regulation, to be considered by reference to whether it differs from the overall impression produced on such a user by

(a) any individual design which has previously been made available to the public, or

(b) any combination of known design features from more than one such earlier design?

2. Is a Community design court obliged to treat an unregistered Community design as valid for the purposes of Article 85(2) of the [Regulation No 6/2002] where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character in accordance with Article 6 of that Regulation?


In summary, the CJEU ruled that:


  1. In order for a design to be regarded as having individual character, the overall impression which that design produces on the informed user must be different from that produced by earlier designs. This impression is taken individually and viewed as a whole, and must not be an amalgam of various features of earlier designs.
  2. There is no burden on the right holder to produce proof of the individual character of a design to show entitlement to unregistered Community design protection, as long as the holder both proves when the design was first made available to the public and indicates the elements of the design which give it individual character.


It is often the case that designs in the fashion industry enjoy a relatively short lifespan. Hence designers and retailers do not seek registered design protection for their works. The CJEU's judgement therefore signifies good news to those who rely on unregistered design protection. It appears that it will be easier in the future for those who seek to enforce theirs unregistered design rights in Europe.

Clients who are unfamiliar with the distinction between unregistered and registered design rights are advised to contact us for advice before adopting a non-registration strategy.

Please contact Timothy J Powell for further information.


People tagged in this article:

Back to all updates