Previous use of design elements does not invalidate design right, rules CJEU

The Court ruled that to qualify for unregistered design rights, Karen Millen garments had to appear different to entire other previous garments, rather than appear different to elements that had appeared in other garments separately.

The ruling also established that designers claiming unregistered design rights did not have to prove that their work had 'individual character'. They only have to indicate what elements of the design they believed had individual character, at which point there is a presumption of validity of those rights, it said.

The CJEU was ruling in a long-running case over Dunnes Stores' copying of a shirt and a top in 2005. Irish retailer Dunnes sent staff to buy a striped shirt and black knitted top from a Karen Millen shop and had copies manufactured and put up for sale.

Karen Millen sued Dunnes for damages claiming that Dunnes had infringed its intellectual property rights, relying on its unregistered Community design rights. These give anti-copying rights to designers without specific registration of designs with a central authority and are commonly used in fashion because designs change too often to justify the lengthy process of obtaining registered design rights.

An advocate general to the CJEU had previously advised the court to rule in the way it has, which is to take the impression of a whole piece of work into account when assessing individual character and not the impression of constituent pieces of it.

Intellectual property law specialist Rob Graham of Pinsent Masons, the law firm behind Out-Law.com, said that designers will welcome the ruling.

"This ruling protects designers as it prevents imitators from arguing that no design right exists on the basis that composite elements of the design have featured in a number of previous articles" said Graham. "Without this protection a retailer could copy a garment and claim it was not protected by design rights because the copied elements, such as distinctive patterns or fabric, had been used in previous garments so didn't have 'individual character'. If a defendant in an infringement action wishes to argue that the design is invalid for lack of individual character, it will have the burden of proving this due to the presumption of validity which arises once the designer has identified the aspects of the design which are claimed to have individual character."

Designs are protected by design rights and, in some limited circumstances,  copyright law. Design rights give designers a monopoly right to the appearance of the whole or part of a product based on its features including the lines, contours, colours, shape, texture and materials used, or its ornamentation.

Design rights can be registered and provide protection against copying for up to 25 years. In the UK design rights that apply nationally can be registered with the UK's Designs Registry but designers can also gain pan-EU protection by registering a Community design with the Office for Harmonisation in the Internal Market (OHIM).

The OHIM, like the Designs Registry, will only register a design if it is new and has individual character.

Designers can also claim unregistered design rights too, providing the designs are original and have individual character.

In the UK unregistered design rights can last for up to 15 years from the year that the design is first recorded in a document or an article made to the design or 10 years from the year in which articles according to the design are sold or hired. Unregistered Community design rights also exist but only offer protection against copying for three years.

The UK parliament is currently considering draft new laws which, if introduced, would create a new criminal offence of infringing a registered design right.