An important judgment from the European Court of Justice has strengthened the position of design right holders. The Court gave its opinion on the protection of the individual character of designs and the burden of proof in demonstrating a design’s individual character, particularly in respect of non registered design rights.
The case concerned garments designed by Karen Miller Fashion (KMF), a striped blouse (in a blue and a stone brown version) and a black knit top. KMF asserted it was the holder of unregistered Community designs for these garments. Its claim sought an injunction restraining Dunnes from using these designs as well as damages. Dunnes claimed that the garments were not protected because they lacked individual character. Dunnes also asserted that it was up to KMF to prove that the garments had individual character.
In assessing whether designs have individual character, what is decisive is what ‘overall impression’ these make on an informed user compared to – briefly put – earlier designs put on the market. The question put to the Court was whether in assessing the overall impression made on the same user, the design must be compared to one or more earlier designs taken individually or to a combination of separate design features from more than one such earlier design. The Court found that the former approach was the correct one, specifically:
‘that the assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, defined and identified designs from among all the designs that have been made available to the public previously.’
The design in question must not be assessed with reference to an amalgam of earlier designs; it must be assessed whether the design in question has individual character as compared to each earlier design. So the Court rules:
‘in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually’
The design law judgment of the Dutch Supreme Court in the case of Apple v. Samsung (legal ground 4.4) hardly seems to be in line with this.
As far as the burden of proof is concerned, the Court held first that the unregistered Community model is protected for 3 years. If the holder provides evidence that the conditions of protection are satisfied and furthermore indicates in what respect this design has individual character, such designs are in any event legally valid. There is, however, also a ‘presumption of validity’ of designs. Contrary to what Dunnes asserts, the design right holder is not subject to any demanding requirements for this presumption to be implemented.
The holder of an unregistered Community design is only required to indicate in what respect the design has an individual character; it is not required to prove that the particular design has an individual character. The holder only needs to define what feature or features of its design give that design its individual character, therefore.
The conclusion that can be drawn from the judgment is that designs are more likely to be found to have an individual character and therefore more likely to be protected under the Community Design Regulation.
By Joost Becker