Dunnes loses latest round in legal battle with Karen Millen

UK fashion company Karen Millen has won another round in its continuing legal battle with Dunnes Stores over the protection of fashion designs after the Supreme Court dismissed some complaints raised by the Irish retail chain.

However, because a European Court of Justice decision is awaited on key issues raised in the Supreme Court appeal by Dunnes against a High Court ruling in favour of Karen Millen, the full hearing of that appeal remains on hold until the European Court gives its decision.

Karen Millen brought the case alleging Dunnes breached European regulations by copying a woman’s shirt and top. At the heart of the landmark case is a black knit top and a striped shirt sold in blue and brown versions.

The case centres on the interpretation of the 2002 regulation relating to the protection of fashion designs and the outcome could have ramifications for all high street retail chains.

In the High Court, Karen Millen’s UK parent company, Mosaic Fashions, had claimed Dunnes produced almost identical women’s clothing to the items produced by Karen Millen, thereby infringing design rights under the 2002 Regulation on unregistered Community Designs.

Karen Millen launched the top and shirt in December 2005 and Dunnes put similar items on sale in the Savida range at their stores in 2006. The Dunnes Stores top was made in China and shipped through Korea to Ireland while the shirt was manufactured in Turkey.

In her High Court judgment, Ms Justice Mary Finlay Geoghegan ruled Dunnes, in offering for sale the black knit top and blue and brown shirts, infringed Karen Millen's rights to unregistered Community design under the 2002 in each of the three designs.

The primary issue was whether Karen Millen held the right to an unregistered community design in the designs. An unregistered design confers on its holder the right to prevent others selling the design only if the contested use results from copying the protected design.

Having examined the garments and heard evidence, Ms Justice Finlay Geoghegan found the right to the community design in the three Karen Millen designs was vested in Mosaic. She ordered Dunnes to stop copying designs for women’s clothing which Karen Millen claimed it originated, and to deliver up any of the items of clothing still in its possession at the time.

Dunnes appealed to the Supreme Court but its full judgment remains on hold pending the ECJ’s decision on key issues.

Those issues include whether the “individual character” of a design for the purposes of the Regulation is to be considered by reference to whether an asserted design differs from the impression produced on an “informed user” by an individual design previously made available to the public, or an amalgam of features of earlier designs.

The ECJ is also considering whether the Supreme Court was obliged to treat a design as valid where the alleged right holder had merely indicated what constituted its “individual character” rather than established that character as a “matter of fact”.

Pending the ECJ decision, the Supreme Court considered an issue of Irish law raised in the appeal concerning the admissibility of evidence about the impact of a design on witnesses who were asked to consider questions of novelty and individual character.

The issue arose after Dunnes complained about how the High Court dealt with evidence of designer Helen McAlinden and others who gave evidence in the case. Among various complaints, Dunnes alleged the High Court had ignored evidence of its witnesses concerning the impact of the designs.

Giving the Supreme Court decision, Mr Justice Donal O’Donnell dismissed the complaints by Dunnes in that regard. The High Court judge did not ignore evidence of fact given by the witnesses concerning the designs or the reasons given by them for their views of the designs, he said. The High Court had adopted the correct approach in relation to the witnesses evidence, he said.