Karen Millen v Dunnes Stores – Opinion of Advocate General
10 April 2014
The Referred Questions
The questions were:
- 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?
- 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?
Advocate General Wathelet delivered an opinion on 2 April 2014.
In summary, the Advocate General concluded that:
- 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.
- 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.
While the foregoing might signify good news to designers and retailers who rely on unregistered design protection, an Advocate General's opinion while persuasive is not binding on the CJEU. It therefore remains to be seen whether the CJEU, in its judgment, will follow or deviate from the Advocate General's advice.
We will monitor the case and provide further updates once they are available.
Please contact Timothy J Powell for further information.