Court of Justice 19 June 2014, Karen Millen Fashions Ltd. vs Dunnes Stores & Dunnes Stores (Limerick) Ltd.,C/345-13, click here

Karen Millen Fashion (in short “KMF”),  is an English brand that produces and sells women’s clothing. In 2005 KMF designed and sold in Ireland a striped shirt and a black knit top. Dunnes, a retailing group in Ireland that also sells women’s clothing, bought these garments from a KMF outlet, had copies thereof produced abroad and afterwards started selling those copies in stores in Ireland in 2006.

The Council Regulation n° 6/2002 on community designs (hereinafter the “Regulation”)provides for intellectual property protection via an unregistered community design. This protection relates to the appearance of the whole or a part of a product and has a duration of 3 years as from the date the design was first made available to the public within the Community. Only designs that are new and that show individual character are eligible for this protection. No other formalities need to be fulfilled. This unregistered design right grants its owner the exclusive right to use the design and to prevent any unauthorized third party from using the same, when the contested use results from copying the design.

 Regarding the condition for protection of individual character of designs, the Council Regulation n° 6/2002 provides in its article 6:

1.    A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

  1. In the case of an unregistered community design, before the date on which the design for which protection is claimed has first been made available to the public:
  2. In the case of a registered community design, before the date of filing the application for registration or, if a priority is claimed, the date of the priority.

2.    In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.”

Furthermore the Council Regulation also holds a presumption of validity for unregistered community designs in its article 85 (2):

“In proceedings in respect of an infringement action or an action for threatened infringement of an unregistered Community design, the Community design court shall treat the Community design as valid if the right holder produces proof that  the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity.”

This protection for unregistered community designs was enacted to take account of the design of products in those industries with a relatively short lifecycle. So, it is rather interesting to see how KMF managed to enforce those rights in respect of women’s clothing.

KMF obtained an injunction against Dunnes based on its unregistered community design rights on these garments from the High Court (the decision of the High Court is available via this link link

Dunnes subsequently brought an appeal against the judgment of the High Court before the Supreme Court (the decision of the Supreme court can be found via this link Dunnes did not dispute having copied the garments, nor did it deny the novelty of the unregistered community designs. Instead, Dunnes argued, on the one hand, that the KMF designs had no individual character and on the other hand, that KMF did not fulfill its burden of proving that the garments had individual character.

In essence, Dunnes’ defense boiled down to isolating a multiplicity of features  taken from different prior designs and combining them to conclude afterwards that the overall impression of this combination of features is no different from the overall impression of the KMF designs,   and thus that these KMF designs did not possess individual character).

Additionally, Dunnes was trying to take advantage of the rules on the burden of proof, where it belongs in principle to the applicant to establish the existence of its exclusive rights by proving that the legal requirements are met.


The Court had to rule on the interpretation of articles 6 and 85 (2) of the Council Regulation 6/2002.

With its first prejudicial question the Supreme Court wanted to know whether the requirement of an “individual character” needs to be assessed vis-à-vis one or more earlier designs, taken individually, or vis-à-vis a combination of features, taken in isolation and drawn from several earlier designs.

As a matter of principle, the court held that when assessing the individual character of a design, an informed user will, when possible, make a direct comparison between the designs at issue, but that such a direct comparison could not always be practicable or common in the sector at hand, in particular because of specific circumstances or the characteristics of an item. In that case there can be an indirect comparison of designs, which is based on an imperfect recollection of specific designs and not on a recollection of specific features from several different earlier designs. Such comparison will be based however on an imperfect recollection of specific designs and not of specific features for several different designs.

Dunnes argued, based on recitals 14 and 19 in the preamble to the Council Regulation, that individual character can be assessed regarding  different features from several designs.
This argument was not withheld by the Court however. It confirmed that the preamble to a community act has no binding legal force and cannot be relied on to derogate from an actual
provision, nor to interpret a provision in a way contrary to its meaning.

Therefore the court considered that the individual character of a design needs to be assessed in comparison to specific, individualized designs.

The second prejudicial question discusses the implementation of the presumption of validity for unregistered community designs provided for in article  85 (2) of the Council Regulation 6/2002. For this presumption to apply, the Supreme Court wanted to know whether the right holder has to prove that its design has individual character or whether it suffices  that the applicant indicates what constitutes the individual character of the design. The Court reminds that protection of unregistered Community designs should be simple and expeditious. It is necessary that the holder of the design specifies what he wants to have protected, however it is sufficient in this respect to identify the features of the design which give it an individual character.

The objectives of simplicity and expeditiousness can only be attained, the Court says, if the right holder, for the presumption of validity of his unregistered design to apply, only has to indicate what constitutes the individual character thereof. Asking the right holder to prove that his design has individual character would not be compatible with the aforementioned objectives, but it would also deprive of every meaning the possibility for the defendant to challenge the validity of that design.

Furthermore the court also found that the wording of the article 85 (2) is unambiguous and cannot be construed  as entailing an obligation to prove that the design at issue has individual character.

Thus the presumption of validity of an unregistered community design  will apply as from the moment the right holder indicates what constitutes the individual character of the design.


The right holder who invokes his unregistered community design rights, e.g in injunction proceedings, will first have to identify the features of his design that constitute its individual character, in order for the unregistered community design to be presumed valid, and to establish the date at which the design or model was made available to the public for the first time.

The alleged infringer will then  have to demonstrate that the features the right holder invoked were all already present as such in one specific, earlier identified design. It will thus not be sufficient to just refer to different earlier designs that each have some but not all of the claimed features in combination.  

This decision is a nice incentive for design right holders to invoke the community wide protection of an unregistered community design in counterfeit proceedings, instead of all too often automatically relying on (national) copyrights.


Tineke Van Hoey                                                                                                                  Eric De Gryse                

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