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Designers would receive more protection against copies if CJEU backs AG's Karen Millen opinion, says expert

Out-Law News | 02 Apr 2014 | 6:08 pm | 3 min. read

Designers can look forward to better protection against imitation goods if the EU's highest court backs the opinion published by one of its legal advisors, an expert has said.

Intellectual property law specialist Rob Graham of Pinsent Masons, the law firm behind Out-Law.com, welcomed the opinion of advocate general (AG) Wathelet in a case concerning rival retail outlets Karen Millen Fashions (KMF) and Dunnes Stores, where the validity of claimed unregistered design rights is at issue.

AG Wathelet said assessing whether a design has "individual character" is not to be judged against "an amalgam of various features of earlier designs". AG Wathelet said designs cannot be said to have 'individual character' unless the "overall impression which that design produces on the informed user [is] ... different from that produced on such a user by one or more earlier designs taken individually and viewed as a whole".

An 'informed user' is normally a technically sophisticated user of the goods at issue in a dispute and who is neither a designer nor a manufacturer.

Whether designs have 'individual character' is important as, if they do not, the people or businesses that create them cannot claim protection against copying, regardless of whether designs are registered or unregistered.

"Unregistered design rights offer valuable protection to designers who do not wish to incur the expense of registering a design," Graham said. "They are particularly useful for the designers of products, such as clothing, which may have a relatively brief commercially useful life-span and which therefore do not justify the expense of protection as a registered design."

"The advocate general’s opinion, if followed by the CJEU, will provide the owners of unregistered design rights with greater protection against imitations. It will be more difficult for imitators to challenge the subsistence of the design right on the basis that individual features of a design have been previously available to the public other than in the form of a single design," he said.

Wathelet was offering his opinion in a case referred to the Court of Justice of the EU (CJEU), the highest court within the trading bloc, by the Supreme Court in Ireland. AG opinions are not binding but the CJEU often follows their guidance when issuing their formal judgment in cases.

The Supreme Court of Ireland has asked the CJEU to help it determine the test for assessing whether unregistered Community designs have 'individual character' or not to help it decide whether to issue an order banning Irish retailer Dunnes Stores from selling clothes that infringe on design rights that rival UK retail outlet Karen Millen Fashions (KMF) has claimed it holds.

Dunnes Stores has admitted to selling clothes with the same designs as those which KMF has sold, but it has challenged KMF's assertion that it holds unregistered rights in those designs. Dunnes Stores has argued that "the garments do not have individual character" and that KMF has not proven "as a matter of fact, that the garments have individual character", according to the AG's opinion.

However, Wathelet said that the CJEU should rule that it is not necessary that a company asserting that it has a unregistered design right to prove that the design has individual character. He said it is only necessary for rights holders to prove when the design was first made available to the public and indicate the design elements which have individual character.   

"The burden of proving that the unregistered design is invalid due to lack of individual character will therefore fall to the alleged imitator in any defence to infringement proceedings," Graham said.

Designs can be protected by both copyright and design rights. 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 if their designs qualify for protection.

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.