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"Fashioning" prior art – CJEU ruling on unregistered Community designs

07 August 2014. Published by Jeremy Drew, Head of Commercial

On reference from the Irish Supreme Court, the Court of Justice of the European (CJEU) has provided further commentary on the scope of prior art required to invalidate an unregistered Community design.

The decision suggests that, where a defendant to infringement proceedings wishes to invalidate an unregistered Community design for lack of "individual character", that defendant cannot rely on multiple pieces of prior art where each contains one or more of the relevant design features. Instead, it is up to a defendant to find identifiable pieces of prior art which create an overall similar impression to the unregistered Community design in question.

The decision is consistent with previous European case law and is good news for rights holders. However, sceptics might say that the decision could lead to some unsatisfactory results where simple products are involved or similarly, where the design right in question is simply a modification of several pre-existing designs.   We've explored some of these issues below.


In many unregistered design right cases and especially cases, such as these, where the defendant admits to copying the design in question, a defendant will seek to invalidate the unregistered design by asserting that it lacks "individual character". This line of attack comes from Articles 4 and 6 of the Community Designs Regulation (6/2002/EC):

"4. A design shall be protected by a Community Design to the extent that it is new and has individual character; […]

6. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public […]"

The above provision certainly indicates that a single pre-existing design with the same overall impression (commonly referred to as prior art) is what is required in order for an unregistered Community design to lack individual character. However, there is some potentially contradictory language in Recital 14 to the Community Designs Regulation– which states that a defendant can rely on the "existing design corpus". You could argue (as Dunnes did in this case), that the reference to the design corpus as a whole, is a reference to all pre-existing design features rather than pre-existing products taken individually.

In this case, Dunnes Stores (Limerick) Ltd, an Irish based retailer, had already admitted to copying two of Karen Millen's (fashion retailer) designs – namely for a black knitted top and a striped shirt (the Karen Millen Designs). However, Dunnes identified several pre-existing designs which contained some of the same design features as the Karen Millen Designs. Dunnes relied on Article 6 of the Regulations, read in conjunction with Recital 14, and sought to invalidate the Karen Millen Designs.

The primary question (although there were others) referred to the CJEU by the Irish Supreme Court was whether a defendant could rely on "a combination of features taken in isolation and drawn from a number of earlier designs" to establish invalidity.


This issue had been discussed in PepsiCo v Grupo Promer Mon Graphic SA (Case C-281/10 P), where the CJEU held that a defendant couldn't rely on an "amalgam" of two pieces of prior art, where each piece of prior art, taken independently, created an overall different impression. In that case, the defendant argued that consumers had imperfect recollection and therefore, the amalgam of both pre-existing designs was sufficient for a consumer to believe the design in question was not of individual character.

The CJEU in this case followed the PepsiCo decision. As to Recital 14, the CJEU noted the accepted position that the recitals of Regulations have no direct legal effect, but notwithstanding that, the CJEU were of the view that the language "existing design corpus" was not inconsistent with Article 6. In other words, in the context of Article 6, "existing design corpus" meant any pre-existing designs, taken individually.

Dunnes raised further arguments, citing optional provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (or TRIPS), but the CJEU was not persuaded by these.


This decision is not a surprising one and, in any event, it remains to be seen whether any individual items of prior art in this case, taken independently, will be enough to invalidate Karen Millen's designs.

However, taken to an extreme, sceptics might say that the results of this decision could lead to an imbalance in favour of rights holders.

It is commonplace, in the fashion industry, for designers to be inspired by pre-existing designs. Indeed you could argue that design inspiration is the life-blood of any creative industry. However, if instead, a first designer of a garment uses or is inspired by the design features from two or more other items then, depending on the product, then that might not result in a high degree of artistic creation.

If a defendant copies an article believing it to be comprised of a series of commonplace and non-extraordinary design features, then, depending on the extent to which the defendant designs away from the article in question, that defendant would be liable for unregistered design right infringement. In those hypothetical scenarios, there may not actually be a great deal of difference between the levels of artistic creation by each designed. In those circumstances it's reasonable to suggest that there's an imbalance between the rights of the first designer and the liability of the second.

The above scenario is particularly relevant in mainstream or high street fashion, where many designs are likely to be influenced by what went before. It is difficult to draw the line between what constitutes acceptable design inspiration and what constitutes unacceptable IP infringement.

There is an additional consideration here, which this case touched upon. It is incumbent on a defendant to establish invalidity (despite Dunne's attempts to shift this burden to Karen Millen in this case). Due to the transient nature of the fashion industry, it can be very difficult for defendants to identify prior art – especially where it is insufficient to merely prove that either: (a) each design feature existed before the claimant's design (in different designs); or (b) the product is basic or "obvious". With no patent style "inventiveness" threshold, this could lead to the protection of unremarkable and simplistic products or, as explained above, those which are arguably no less of a copy than the supposedly infringing product.

Ultimately, defendants will continue to have trouble once they have admitted to copying an article. Whilst courts have yet to say as much, it's perhaps difficult to avoid the assumption that if the article was worth copying, then it must be worth protecting. In most cases, infringement will likely follow if a defendant copies just one article; whereas using design features from a number of articles is likely to fall on the right side of the line.

Written by Jeremy Drew and Chris Sanderson