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Designers to benefit as Karen Millen edges towards Dunnes victory

Karen Millen has moved closer to winning its eight-year intellectual property battle with Irish retailer Dunnes Stores, after an EU advocate general ruled in favour of the womenswear retailer this week.

The case – which will now go before the Court of Justice of the European Union (CJEU) – centres around a black jumper and two shirts that Karen Millen claims were copied by Dunnes.

The Irish department store business claims the designs were not sufficiently distinct to warrant protection, and has appealed two previous rulings. The CJEU is expected to hand down its decision this summer.

But this week the advocate general, whose job it is to present opinions on the cases brought before the court which are then passed on to the CJEU judge, published guidance saying a combination of design elements which in themselves may not be distinctive and have individual character, can if brought together for the first time be considered a distinctive and protectable design.

The statement added the burden of proof regarding the “individual character” of an unregistered design right was not on the owner but on the defendant – in this case, Dunnes.

Legal professionals hailed the decision as being fair and logical, and noted it would offer designers of all stripes greater clarity and protection for their own works.

Lee Curtis, a partner at trademark and design law firm Harrison Goddard Foote, said: “It’s a good decision – it would have had major implications for designers if it had gone the other way – but this should give comfort to all designers, because it will stop some of the fast retailers, who don’t necessarily have an in-house design team, taking other people’s rights.”

Richard Willoughby, a partner at intellectual property solicitors D Young & Co, agreed. “The advocate general has said that Dunnes’ premise for defence is wrong, saying you must assess whether the design has individual character as a whole. It would be grossly unfair on any designer to say you should look at individual features within the whole because there is originality in putting them together,” he said. “This has dealt with a couple of very clear questions.”

Gavin Llewellyn, a partner at business law firm Davenport Lyons, said it was “good news for designers relying on unregistered design rights, which many designers in the fashion industry rely on, of course, because of the ephemeral nature of the designs”. 

“It strengthens the right in the hands of the designer against would-be copiers by making it both easier to obtain and to enforce,” he said.

Neither Karen Millen nor Dunnes responded to requests for comment.

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