The Copy-Cat’s Last Life?

Karen Millen Ltd –v- Dunnes Stores & Anor

The High Court ruled in favour of Karen Millen Ltd in a court action against Dunnes Stores. What was the issue? Two shirts and a jumper. According to Karen Millen, the items of clothing enjoyed protection under the Council Regulation (EC) No 6/2002 of 2001 as unregistered Community design.

An important aspect of the case is that Dunnes Stores did not deny copying the design of the shirts and jumper. Accordingly the question for the High Court was whether Karen Millen qualified as holder of the right to an unregistered Community design under the EC Regulation.

Unregistered Community Design

It has been possible in Ireland since the 1920s to protect certain designs by registering them. However, the process of registration is a burden for products with a limited life span. Unregistered Community design, as envisaged in the EC Regulation, applies to sectors of industry that produce large numbers of designs for products which frequently have a short market life. Protection of such designs is secured without the burden of registration formalities and thus is of considerable advantage to those in the high-street fashion industry.

In order to qualify for protection under the EC Regulation the design must be new, have individual character and it must have been made available to the public. The design is then protected as against any other design which does not produce on the informed user a different overall impression. Protection is conferred for three years from the date on which the design was first made available to the public within the EU.

The right to the Community design vests in the designer or his successors. However, where the designer is an employee and the design is developed in the course of his/her duties, the design vests in the employer unless otherwise agreed.

High Court Decision

Karen Millen Ltd successfully established the validity of its right to an unregistered Community design and Dunnes Stores’ challenge failed.

In the view of the High Court, Dunnes Stores failed to establish that the shirts and jumper in question did not enjoy individual character. Dunnes Stores exhibited a similar Paul Smith shirt and Dolce & Gabbana jumper in an attempt to discredit the individual character of the Karen Millen garments but to no avail.

The outcome is of considerable importance. The High Court order restrains the sale or disposal of the copied garments by Dunnes Stores and the remaining articles must be delivered up to Karen Killen Ltd. In addition, the High Court issues an order for an account of the profits earned by Dunnes Stores from the sales.

The case was subsequently appealed to the Supreme Court who rejected some of Dunnes Stores claims and referred a number of points to the European Court of Justice (ECJ). Following the ECJ ruling in favour of Karen Millen the Supreme Court dismissed the appeal of Dunnes Stores.

For further information on this topic, please contact Elaine McGrath at emcgrath@reddycharlton.ie