No proof of novelty of a design required

On a referral from the Supreme Court of Ireland, the supreme court, the Court of Justice of the European Union (EuGH) had to decide in preliminary ruling proceedings how the individual character of an unregistered Community design is to be determined and who is to prove it in infringement proceedings.

The proceedings at first instance concern the dispute between fashion manufacturers/retailers Karen Millen Fashion (KMF) and Dunnes Stores (DS) regarding the imitation of various upper garments by KMF through DS. The latter company had obtained the clothing items from its competitor, had them reproduced in largely identical form, and offered them for sale in its own stores a short time later. KMF subsequently sued the competitor on the basis of anunregistered Community designfor an injunction and damages. DS defended itself against this by arguing that, firstly, the individual character of the design had not been proven. Secondly, the design should also be examined with regard to individual character to determine whether it merely contained a combination of isolated features from various previously known designs. This was the case here, and therefore KMF's unregistered design lacked individual character and thus protection.

The Irish Supreme Court hearing the case referred the matter to the Court of Justice of the European Union (EuGH) for clarification of these two issues.

The Court's decision

The Court of Justice of the European Union (EuGH) stated in itsjudgment of 19.06.2014 (Az. C-345/13)that the individual character of a design must be determined exclusively by comparison with one or more specifically identified designs. Conversely, the determination or negation of individual character by individual comparison of features with isolated elements of several earlier designs is not possible.

Furthermore, the Court established that the Community Design Regulation provides for a presumption of validity of unregistered designs. In infringement proceedings, the owner of such a design therefore need not prove individual character, but merely indicate which features constitute the individual character. However, this presumption is rebuttable, and it is the copyist who is responsible for rebutting it.

Conclusion

The explanations regarding the determination of the individual character of a design are correct precisely because only the individual character of the overall impression—that is, the appearance of a product—is relevant. However, a different overall impression of a design can readily arise even if only the combination of features, but not the features themselves, is new.

The presumption adopted by the Court of Justice of the European Union (EuGH) represents a significant advantage for the owner of the design. Through this approximation to theregistered designthe unregistered design has undergone a significant enhancement in status. This makes it all the more interesting for manufacturers and designers of seasonal articles, for example in the fashion and textile sector.