A recent opinion issued by Advocate General Melchior Wathelet could strengthen the IP rights of fashion designers in Europe.  In a long-running infringement case by Karen Millen Fashions against Dunnes, a major retail chain in Ireland, the Advocate General’s opinion issued to the Court of Justice of the European Union (CJEU) sides with designer Karen Millen.  Although Advocate General opinions are not binding, the CJEU tends to adopt them.

The case began in 2007 when Karen Millen launched infringement proceedings against Dunnes for making and selling copies of a Karen Millen striped shirt and black knit top.  Dunnes does not dispute that it copied the clothing in question but disputes that the clothing pieces are unregistered community designs as defined by Article 6 of the Community Design Regulation.  At the heart of the case is whether the shirts had “individual character,”  a vague term of art that may get some clarification with a CJEU ruling.

The regulation states that the “assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus.”  As is common in the fashion industry, the designs in question borrow from design elements of earlier designs.  Dunnes argues that if the overall impression of the design does not differ from either the overall impression produced by the individual earlier designs taken separately or does not differ when compared to a fictional garment combining various elements of those individual designs, there is no “individual character.”

The Advocate General’s opinion sides with Karen Millen and recommends that for a design to have individual character, “the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs taken individually, rather than by a combination of features drawn from several designs previously made available to the public.”

In other words, if the Advocate General’s opinion is adopted by the CJEU, fashion designers can continue to argue that their designs should be protected even when they are based on many design elements combined to create a new design.   A favorable ruling by the CJEU would make it easier for fashion designers to prove that their designs have the individual character required for protection under the regulation and make it riskier to sell copycat designs.