Title: Karen Millen Ltd -v- Dunnes Stores & Anor High Court (Commercial): Judgment delivered by Ms Justice Finlay Geoghegan on December 21st, 2007
Judgment
The plaintiff, Karen Millen Ltd, was entitled to an order restraining Dunnes Stores from selling a Savida top, a blue shirt and a brown shirt found to be copied from Karen Millen designs; was entitled to those remaining in Dunnes Stores being handed up; and was entitled to an order for an account of the profits made so far from the sales.
Background
The case concerned the right of Karen Millen Ltd under EU Community law to protect its design of three garments from being copied by another company, Dunnes Stores, and sold. The designs were unregistered, and Karen Millen claimed protection under Council Regulation (EC) No 6/2002 of December 12th, 2001.
Dunnes Stores did not deny copying the designs, but disputed the claim that they were protected by European law.
The shirts were produced in 2005 and sold in Ireland and the UK in December of that year.
Similar shirts and top were produced by Dunnes Stores under the Savida label and sold in their shops from November 2006. It was not denied that they were produced by copying the Karen Millen garments.
The main issue in the proceedings was whether the plaintiff was the holder of the right to an unregistered Community design in relation to the three garments. This was the first time this regulation was contested in Ireland.
The provisions of the regulation were outlined, including the distinction between registered and unregistered Community designs. Certain sectors of industry valued the advantage of registration for the higher level of legal certainty it brought; others produced large numbers of designs for products frequently having a short market life, where protection without the burden of registration is an advantage. An unregistered Community design constitutes a right only to prevent copying.
Design was defined as meaning the appearance of the whole or a part of a product resulting from its features and in particular those specified including colour, texture and material. It is only protected if it is both new and has individual character.
The issues in dispute were whether the plaintiff had proved that Karen Millen Ltd had the right to the design of the two shirts and the top; who and what is an "informed user" for the purpose of the regulation; how should the court assess the impact of the design on an "informed user"; what the designs should be compared with; should questions be referred to the European Court of Justice at the outset; had the plaintiff established a right to an unregistered Community design.
Following evidence from a designer employed by Karen Millen, Ms Justice Finlay Geoghegan found that the right to the Community design in the blue and the brown shirt rested with the plaintiff.
The parties were in dispute as to whether the designs had an individual character, and that this would be recognised by the "informed user".
This was defined as "a woman with a keen sense of fashion, a good knowledge of designs of women's tops and shirts previously available to the public, alert to design and with a basis understanding of any functional or technical limitations on designs for women's tops and shirts."
However, Ms Justice Finlay Geoghegan said it was neither necessary nor relevant for the court to consider evidence of the overall impression produced on a witness, even one with the characteristics of an informed user.
Other designs of similar garments by other designers were produced by the defendants for the purpose of comparison. They claimed that these designs would have had the same effect on the "informed user" as their designs, but this was rejected by Ms Justice Finlay Geoghegan.
Decision
The judge found that Karen Millen had the right to a valid unregistered Community design in the designs for the top, the blue shirt and the brown shirt. The Savida top, the Savida blue shirt and the Savida brown shirt "are within the scope of protection of such unregistered Community designs within the meaning of Article 10" of Council Regulation (EC) No 6/2002.
She also found that these items were produced by reproducing the plaintiff's unregistered Community designs.
The plaintiff was entitled to the following reliefs: an order restraining the defendants from selling or otherwise disposing of the Savida garments; an order for the delivery to the plaintiff of any of these garments still in their possession and an order for an account of the profits earned by Dunnes Stores from the sales of the Savida garments. Ms Finlay Geoghegan said she would hear counsel as to the precise form of the last order.
The full text of the judgment is available at www.courts.ie.
Solicitors: DFMG Solicitors, Embassy House, Ballsbridge, Dublin (for the plaintiff); Matheson Ormsby Prentice, Herbert Steet, Dublin (for the defendant)