Supreme Court dismisses Dunnes' Karen Millen appeal

Irish retailer faces substantial legal costs arising from the litigation over the copying of designs

Karen Millen on Grafton Street, Dublin. The High Court ruled in 2008 that Dunnes, in offering for sale a black knit top and blue and brown shirts, infringed Karen Millen’s rights to unregistered community design under European regulations. Photograph: Dara Mac Dónaill/The Irish Times

Karen Millen on Grafton Street, Dublin. The High Court ruled in 2008 that Dunnes, in offering for sale a black knit top and blue and brown shirts, infringed Karen Millen’s rights to unregistered community design under European regulations. Photograph: Dara Mac Dónaill/The Irish Times

Tue, Jul 22, 2014, 14:25

The lengthy legal battle between British fashion company Karen Millen and Dunnes Stores over the copying of designs has finally concluded with the dismissal by the Supreme Court of Dunnes’ appeal in the case.

Dunnes faces a substantial legal costs bill arising from the litigation. The dismissal order, and a costs order against Dunnes, was made by the Supreme Court yesterday in light of a European Court of Justice ruling last month rejecting key arguments advanced by Dunnes.

Mr Justice John Murray, presiding and sitting with Mr Justice Donal O’Donnell and Mr Justice Liam McKechnie, told lawyers for the sides it would give reasons for dismissal in a written judgment later. A number of questions had been referred to the European court by the Supreme Court concerning interpretation of EU regulations on the protection of fashion designs.

In the High Court in 2008, Ms Justice Mary Finlay Geoghegan ruled that Dunnes, in offering for sale a black knit top and blue and brown shirts, infringed Karen Millen’s rights to unregistered community design under council regulation (EC) number 6/2002 in each of the three designs.

Dunnes appealed to the Supreme Court where it argued Karen Millen had failed to prove the individual character of the designs at issue and thus was not the holder of an unregistered community design. Dunnes contended the individual character of a design must be assessed by reference not only to one or more individual designs made available to the public previously, but also by a combination of features taken in isolation and drawn from a number of earlier designs.

In its judgment, the ECJ said the individual character of a design must be assessed by reference to one or more specific, individualised, defined and identified designs from among all the designs made available to the public previously. That assessment could not be conducted by reference to a combination of features taken in isolation and drawn from a number of earlier designs, it ruled. The ECJ also said in its judgement Karen Millen had put the shirt and top on sale in Ireland in 2005 and the items were purchased by representatives of Dunnes Stores.

“Dunnes subsequently had copies of the garments manufactured outside Ireland and put them on sale in its Irish stores in late 2006.”

The Supreme Court, which had already rejected some of Dunnes claims, said yesterday, in light of the ECJ ruling, the appeal would be dismissed for reasons to be set out later in a written judgment.