Karen Millen wins design case against Dunnes

UK retailer Karen Millen has won its long-running intellectual property battle against Irish retailer Dunnes Stores, after the European Court of Justice ruled in its favour over the protection of fashion designs. The case centred on a shirt and top designed by Karen Millen in 2005, which the

retailer claimed were copied by Dunnes’ Savida label in 2006. The Irish department store admitting copying, although it claimed that Karen Millen designs “lacked original character” and were therefore not distinct to warrant protection.

The case was referred to the European Court of Justice from the Irish Supreme Court, which asked the European court to assess when a design possesses “individual character” to allow it protection under EU law.

Dunnes argued that it should be up to Karen Millen to prove that the items in question had individual character, by submitting example of prior products, which when combined, allegedly featured the characteristics of the Karen Millen designs. However, the court found that Karen Millen only needed to indicate the features which give the designs their individual character, without the need to provide supporting evidence.

The court ruled that designers can rely on ‘community unregistered design rights’, which means that even if a design isn’t a registered copyright, the designer can still protect it against design copycats. The European court added that even designs not registered with EU trademarks should be presumed to be protected, unless their individuality had been successfully challenged.

European Court of Justice backs fashion designers against copycats

This is great news for fashion designers who generally rely on ‘community unregistered design rights’, which give them protection for three years under the EU's design-rights law, because the cost of registering every single design is expensive, with one single design costing around 600 Euros to register with the EU.

The decision was welcomed by David Rose, head of intellectual property at law firm King & Wood Mallesons SJ Berwin, who commented: “This is welcome news for the fashion industry, which routinely relies on the free, immediate protection offered by UCDs to guard against the threat of copycats.

“Designs can often enjoy a relatively short lifespan so this form of IP protection is extremely valuable, and the fact that its importance has been upheld by the court today means that designers and other holders of UCDs will ultimately find it easier to enforce their rights.”

Simon Bennett, partner at Fox Williams LLP added: “The decision of the European Court is a considerable boost to the effectiveness of the unregistered Community Design Right and, therefore, the protection which this right provides to fashion designers.

“However, fashion designers need to be sure that they have the appropriate type of protection for their designs. In some situations it may be appropriate to seek to obtain a registered Community Design Right. Application for registration is relatively inexpensive and quick and provides a significantly greater amount of protection.”

The case will now go back to the Irish Supreme Court for a final ruling, based on the European court's decision.

Image: Karen Millen vs Dunnes Stores’ Savida label