In an important decision for unregistered design right holders, the Court of Justice of the European Union (the CJEU) delivered its judgment yesterday in Karen Millen Fashions Ltd v Dunnes Stores (Case C-345/13).


Karen Millen Fashions, a well-known British clothing retailer, claimed infringement of their unregistered design rights in three items of clothing by Dunnes Stores, a large Irish retail chain. The Irish High Court granted relief to Karen Millen in the form of an injunction restraining Dunnes Stores from using the designs and also in damages. Dunnes Stores, although not denying that it had copied the Karen Millen designs, appealed the decision to the Irish Supreme Court on the grounds that the items of clothing did not have individual character within the meaning of Article 6 of Regulation 6/2002 (The Regulations) and further that Karen Millen Fashions Ltd were required, under the Regulations, to prove that the design had individual character.

The Irish Supreme Court in turn referred two questions to the CJEU under the preliminary reference procedure.

The First Question

The first question referred by the Irish Supreme Court relates to the test for individual character under Article 6 of the Regulations. The competing interpretations relate to whether Article 6 must be interpreted as meaning that the overall impression which that design produces on the informed user must be different from that produced on such a user by

(a) one or more earlier designs made available to the public, taken individually and viewed as a whole, or

(b) a combination of features of those earlier designs taken in isolation from the whole design.

The court found that there was nothing in the wording of Article 6 of The Regulations to support the view that the overall impression must be produced from an amalgamation of features of different designs. In fact the court considered the effect of the use of the words ‘any design’ in the phrase ‘overall impression produced on the informed user by any design’ was to support the interpretation that Article 6 prescribes an assessment of individual character against ‘specific, individualised, defined and identified designs from among all the designs which have been made available to the public previously’.

This test, the court said, was in line with previous caselaw of the CJEU which had held that, where possible, that the informed user will make a direct comparison between the designs in contention. It follows that in order for a direct comparison to be made the earlier designs must be viewed as a whole on an individual basis and not by isolating specific elements of earlier designs. Even in cases where a direct comparison is not possible, an imperfect recollection of the overall impression produced by those earlier designs is not based on the isolated features of those designs, but on the designs as a whole.

Arguments put forward by Dunnes Stores based on the wording of Recitals 14 and 19 of the Regulations did not persuade the court to adopt a different interpretation. It was established, the court said, that the preamble to a Community Act has no binding legal force and cannot be used to interpret provisions in a manner contrary to their clear meaning. The court similarly dismissed an argument based on the wording in Article 25(1) of the TRIPS Agreement.

The Second Question

In the second question referred, the Irish Supreme Court asked whether Article 85(2) of the Regulations requires a design right holder to prove that the design has individual character within the meaning of Article 6 (the interpretation being proposed by Dunnes Stores), or whether the right holder need only indicate what constitutes the individual character of that design.

It was held that the interpretation proposed by Dunnes Stores could not be sustained and that the Regulations only required the right holder to identify those elements of the design that constitutes its individual character.

The court found support for this proposition on numerous grounds.

The presumption of validity of an unregistered design right in the heading of Article 85, it held, was wholly incompatible with an interpretation of Article 85(2) that requires the design right holder to prove that the design has individual character. Further such an obligation would have the effect of rendering meaningless the provision in Article 85(2) for a declaration of invalidity in favour of a defendant who successfully contests the validity of the design.

The court looked to the objective of the Regulations as evidenced by Recitals 16 and 17, which is to protect unregistered design rights in a simple and expeditious manner. This objective would not be fulfilled if the interpretation proposed by Dunnes Stores was followed.


The judgment will be welcomed by the holders of unregistered design rights. Using earlier whole designs as a reference for the informed user, provides an easier basis on which a design right holder must prove individual character, than by referencing an amalgamation of various elements of earlier designs. The court also supported design right holders by rejecting a suggestion that the right holder must prove the design has individual character and by holding that the right holder must only indicate the nature of the individual character.  

The matter will now revert to the Irish Supreme Court to decide on the application of the CJEU’s decision to the facts at hand.