Dunnes says court took narrow view on copying designer's work

A dispute between Dunnes Stores and British fashion company Karen Millen over the protection of fashion designs has come before the Supreme Court.

The five-judge court yesterday reserved judgment on the appeal by Dunnes Stores against a High Court ruling in favour of Karen Millen, which claimed the Irish retail giant had breached European regulations by copying a woman’s shirt and top.

At the heart of the case is a black-knit top and a striped shirt sold in two colours.

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

Opening the appeal yesterday, Michael Cush SC, for Dunnes Stores, said the only issue before the court was unregistered design rights.

He argued that the High Court had taken a very narrow approach and the test whether unregistered rights were breached should not have been confined to a comparison against just one item.

There was no reason why overall impressions should be confined to a single garment, he said.

Brian O’Moore SC, for Karen Millen, said the High Court judge was not to be criticised for taking the closest design for comparison purposes.

Almost identical

In the High Court case in 2007, Karen Millen’s British parent company, Mosaic Fashions, had claimed Dunnes Stores produced almost identical women’s clothing to the items produced by Karen Millen, thereby infringing design rights as protected by a new European regulation of 2002 on unregistered community designs.

Karen Millen launched the top and shirt in December 2005 and Dunnes Stores 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 Dunnes Stores shirt was manufactured in Turkey.

In her High Court judgment, Ms Justice Mary Finlay Geoghegan ruled that Dunnes, in offering for sale the 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.

The primary issue was whether Karen Millen held the right to an unregistered community design in the Karen Millen 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.

Community design

Having examined the garments and heard the evidence and submissions, Ms Justice Finlay Geoghegan found the right to the community design in the three Karen Millen designs was vested in Mosaic.

She had 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. A stay was placed on Dunnes Stores account of profits to Karen Millen pending the outcome of the Supreme Court appeal.

Mr Justice John Murray, presiding, said yesterday judgment would be delivered later.