Dunnes guilty of copying label's designs

A UK clothing company has won its High Court action alleging that Dunnes Stores breached European regulations by copying a woman's shirt and top. Dunnes will now have to account to the Karen Millen chain for profits made on sales of the copy garments, which were sold through its Savida range.

In a landmark judgment centring on the first interpretation by a court of the ambit of a 2002 EU regulation in relation to protecting fashion designs, Ms Justice Mary Finlay Geoghegan found against Dunnes Stores in the first of three cases taken against it by Karen Millen's UK parent company, Mosaic Fashions. She will later hear similar actions being taken by Coast Ltd and Whistles Ltd, also owned by Mosaic.

The judge adjourned to January 18th issues relating to how Dunnes will account for profits made from copying the Karen Millen (KM) designs and she will also then issue directions for the hearing of the other cases.

Mosaic had claimed that Dunnes copied items of clothing and put them on sale after they were launched by the UK companies.

It was claimed Dunnes produced almost identical women's clothing to items produced by KM, thereby infringing design rights as protected by a new European regulation of 2002 on unregistered community designs.

The case centred on the nature of a Karen Millen (KM) "faux shrug cami top" and a KM striped woman's shirt, sold in blue and brown version. Mosaic alleged a Dunnes' black knit top, blue shirt and brown shirt were copies of the KM designs which were designed "in house" for the KM brand.

KM launched the top and shirt in December 2005 and Dunnes put similar items on sale at their stores in 2006. The Dunnes Stores top was made in China while the Dunnes Stores shirt was manufactured in Turkey.

Dunnes claimed the KM items were not originals and called witnesses from the fashion world who said the "faux shrug cami top" has been available for many years and that the KM shirt was of a design similar to other women's shirts.

In her detailed judgment yesterday, the judge ruled that Dunnes infringed KM's rights by selling the clothing.

She said that EU regulations establishes a new European Community design and it was desirable to have "consistency of interpretation". She said the unregistered community design is intended for products with a short market life and Mosaic argued this protection was highly relevant for the fashion industry, especially the "high end of the High Street retail fashion industry".

Dunnes had ceased to deny their top and shirts were produced by copying the KM designs, she noted. However, it claimed KM did not have an unregistered community design for the designs.

The judge said the primary issue in the case was whether KM held the right to an unregistered community design in the clothing items.

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. Under the regulation, a design must make a different "overall impression on an informed user", must be new and must have individual character before it can be protected by the new law.

The judge found the right to the community design in the three KM designs vested in Mosaic. She also found the designs were an unregistered community design. She rejected Dunnes claims that a Dolce & Gabbana grey knit top and a Paul Smith blue striped shirt were prior designs containing at least one or more of the elements of the KM top and KM shirts.

The KM designs made a different overall impression on an informed user from the Dolce & Gabbana top and Paul Smith shirt, she ruled.The judge said the KM and D&G tops were both "faux shrug over cami" tops but the similarity ended there. They differed in colour, knit and several other design and other features.

There was also a "clear difference" between the KM shirts and the Paul Smith shirt. KM's unregistered community designs were valid, she said.

The use by Dunnes of the Savida garments was an infringement of Mosaic's unregistered community design and the UK company was entitled to prevent Dunnes making use of it.

Mosaic was entitled to orders restraining Dunnes Stores from selling or making use of the items; orders for delivery up of any of the items still in its possession and an order for account of the profits earned by Dunnes or any associated company from the sales of the items.