The Irish High Court has recently given a landmark decision concerning Council Regulation (EC) 6/2002 (the Regulation) which protects Community design rights. This decision generated much interest in Ireland as there is little case law here concerning unregistered design rights and the interpretation of the Regulation.

Fashion designer Karen Millen (KM) alleged that Dunnes Stores (Dunnes) had copied two shirts and a knit top from its collection and had manufactured these for sale. Dunnes did not deny that its top and shirts were produced by copying KM's designs and claimed that copying a design is not necessarily unlawful – it depends on whether there exists a legally protected right to the first design which is infringed by the copying. As the design right was not registered, in order to be protected KM had to establish a valid unregistered design right to prove that the Dunnes clothes were unauthorized copies.

Unregistered Community design rights are a particularly suitable form of rights protection for industries (such as fashion) where the life of a design is short, where there is a high turnover and where protection by registration may be neither feasible nor necessary (a registered design can be protected for up to 25 years). While both registered and unregistered design rights confer on the right holder a right to exclusive use, an unregistered design right only permits the right holder to prevent use that results from copying the design.

A design right automatically comes into existence once a product incorporating the design is made available to the public. From that date, a design is protected against copying for a three-year period. However, a design is only protected if it is both "new" and has "individual character". As the KM designs were made available to the public in December 2005, protection against copying, if KM were correct about protection, would exist until December 2008.

"Design" is defined in the Regulation as the appearance of the whole or a part of a product resulting from its features and, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. A design is "new" if no identical design has previously been made available to the public and a design is considered to have "individual character" if the overall impression produced by it on the informed user differs from the overall impression made by any design previously available to the public. The degree of freedom of the designer should also be taken into account when assessing the "individual character" of a design.

Depending on the design, the notional "informed user" varies in each individual case. After considering the limited case-law and authorities available, the High Court opined that in this case the informed user was "a woman with a keen sense of fashion, a good knowledge of designs of women's tops and shirts previously available to the public, alert to design and with a basic understanding of any functional or technical limitations on designs for women's tops and shirts". The High Court declined to make a reference to the European Court of Justice (requested by Dunnes) under Article 234 of the EC Treaty on the proper interpretation of the Regulation, taking the view that its interpretation was consistent with that of OHIM or any other Community design court.

In an effort to prove that the KM designs did not have individual character, Dunnes had produced a Dolce & Gabbana top and a Paul Smith shirt for comparison purposes. However, the High Court held that the impression produced by the KM top and shirts on the informed user clearly differed from the impression produced by the Paul Smith and Dolce & Gabbana clothes. The KM clothes may have had elements of these garments but it was the overall impression that had to be considered and not individual components of the designs.

The High Court held that KM had a valid unregistered Community design right in the top and shirts and that the copying by Dunnes infringed KM's protected rights. Dunnes was ordered to stop selling the infringing goods, to deliver all remaining stock to KM and to account for profits earned from sales of the products. Dunnes has since signalled its intention to appeal the decision to the Supreme Court, and two further cases dealing with similar issues have been adjourned pending the outcome of this appeal.

Designers and manufacturers will be eagerly awaiting the appeal decision. But as it stands the Irish courts appear keen to protect creativity in industries by application of this very powerful IP right.

John Whelan and Ciara Cullen

A&L Goodbody
International Financial Services Centre
North Wall Quay
Dublin 1
Ireland
Tel: +353 1 649 2234
Fax: +353 1 649 2649
jwhelan@algoodbody.ie
www.algoodbody.ie