Karen Millen Ltd v Dunnes Stores and another

• Jurisdiction: Ireland
• Judge: Ms. Justice Finlay Geoghegan
• Judgment Date: 21 December 2007
• Neutral Citation: [2007] IEHC 449
• Docket Number: [2007 No. 15 P] [2007 No. 16 P] [2007 No. 20 COM] [2007 No. 21 COM],[No. 15 P/2007]
• Court: High Court
• Date: 21 December 2007

THE HIGH COURT

[2007 No. 15 P]

[2007 No. 16 P]

[2007 No. 20 COM]

[2007 No. 21 COM]

BETWEEN

KAREN MILLEN LIMITED

PLAINTIFF

AND

DUNNES STORES AND DUNNES STORES (LIMERICK) LIMITED

DEFENDANTS

Abstract:

Intellectual property - Community design - Unregistered - Passing off - Copyright -Account of profits - Overall impression on informed user - Preliminary reference -Article 234 EC - Council Regulation (EC) No. 6/ 2002

The plaintiffs commenced proceedings against the defendants on the basis that the defendants were offering for sale items of clothing that the plaintiff alleged infringed their unregistered Community designs pursuant to Council Regulation (EC) No. 6/2002. The plaintiff also claimed that the defendants were guilty of passing off and that their copyright had been breached. The issue arose as to whether the designs had the character creating an overall impression on the informed user that they differed from designs previously made available to the public and whether a preliminary reference to the Court of Justice was necessary.

Held by Finlay Geoghegan J, that a preliminary reference was not necessary. The onus was on the defendants to establish that the designs did not have the character in accordance with the requirements of the regulation. The plaintiff had the right to a valid unregistered Community design. An order would be granted restraining sale of the designs by the defendants, their delivery up would be granted and an account of profits would be ordered.

Reporter: E.F.

1 JUDGMENT delivered by Ms. Justice Finlay Gewhegan on the 21st day of December 2007

Preliminary

2 The plaintiff is a United Kingdom registered company which carries on the business of producing and selling women's clothing. It carries on business in the State in a number of retail outlets including in Brown Thomas, Clerys, BT2 and its own stores in Dublin and Newbridge.

3 The first named defendant is an unlimited company which is connected to a series of companies including the second named defendant which trades under the

4 name "Dunnes Stores" in Ireland andinteralia has a retail business in women's clothing.

5 By two separate plenary summons on 2nd January, 2007, the plaintiff commenced proceedings against the defendants arising out of a discovery made in November, 2006 that the defendants were offering for sale in the State three items: a black knit top, a blue shirt and a brown shirt, which are alleged to infringe three designs of the plaintiff. By order of 5th February, 2007, the proceedings were admitted to the Commercial List and consolidated.

6 The claim pursued on behalf of the plaintiff at the hearing of the proceedings was confined to an allegation that the defendants, in offering for sale the black knit top and blue and brown shirts, are infringing the plaintiff s rights to unregistered Community designs pursuant to Council Regulation (EC) No 6/2002 of 12th December, 2001 ("the Regulation") in each of the three designs referred to below.

7 The defendants at the hearing no longer denied that their top and shirts were produced by copying the plaintiff s designs. Copying a design of another is not necessarily unlawful. It depends upon whether there exists a right to the first design protected by law which is infringed by copying and any use made of the copy. The resolution of the plaintiff s claim herein that the defendants by copying have infringed its rights contrary to the Regulation is primarily dependent on whether or not the plaintiff has, as claimed the right to an unregistered Community design for each or any of its designs next referred to.

The Plaintiffs Designs

8 The plaintiff claims the right to an unregistered Community design in the designs of each of the following articles of clothing produced by it:

9 1. A black knit top, three photographs of which appear in the appendix to this judgment, hereinafter referred to as "the KM top".

10 2. A blue striped shirt, three photographs of which appear in the appendix to this judgment, hereinafter referred to as "the KM blue shirt".

11 3. A brown striped shirt, three photographs of which appear in the appendix to this judgment, hereinafter referred to as "the KM brown shirt".

12 The KM blue shirt and KM brown shirt will also be collectively referred to as "the KM shirt or shirts".

13 The design for the KM top was produced in August, 2005. The products from the design, the KM tops, were subsequently produced in four different colours and made available to the public in the week commencing the 25th December, 2005. It was released for sale in locations both in the State and the United Kingdom.

14 The designs for the KM shirts were produced in 2005. The KM blue shirt and the KM brown shirt were subsequently produced and made available to the public in the week commencing the 18th December, 2005, by release for sale both in the State and in the United Kingdom.

15 It is claimed that each design was developed or produced by an employee of the plaintiff as part of her duties. It is not in dispute that the design for the KM top was so produced. The defendants deny that the plaintiffs have adduced evidence that the designs for the KM shirts were so developed.

The Defendants' Products

16 The defendants' products are sold under the "Savida" label. The three relevant items are:

17 1. The Savida black knit top, three photographs of which appear in the appendix to this judgment, hereinafter referred to as "the Savida top".

18 2. The Savida blue striped shirt, three photographs of which appear in the appendix to this judgment, hereinafter referred to as "the Savida blue shirt".

19 3. The Savida brown striped shirt, three photographs of which appear in the appendix to this judgment, hereinafter referred to as "the Savida brown shirt".

20 The Savida blue shirt and the Savida brown shirt shall be collectively referred to as "the Savida shirt".

21 It is not now in dispute that the defendants arranged for a KM top and KM shirts to be purchased on their behalf from one of the plaintiffs' outlets in the State in March, 2006. It is further not in dispute that the Savida top and Savida shirts were produced by copying the KM top and KM shirts and were put on sale by or on behalf of the defendants in the State by November, 2006.

The Claim

22 In the pleadings delivered herein, the plaintiff claims that it is the holder of an unregistered Community design for each of the designs referred to above and that the defendants have infringed same in the production and sale of the items referred to above. In the pleadings delivered it also claimed that the defendants were guilty of passing off and in breach of the plaintiff s alleged copyright in the said designs. These latter claims have not been pursued. The defendants in their pleadings denied all allegations, including that of copying.

23 The documents discovered by the defendants in the course of the proceedings, admitted into evidence without objection, disclose facts which establish unless otherwise explained that the defendants' products were produced by copying the plaintiff's designs. The defendants through their Counsel at the hearing indicated that they were not offering any evidence to the Court to seek to establish that the Savida top and Savida shirts had been produced other than by copying the designs of the KM top and KM shirt.

24 The primary issue in the proceedings is whether the plaintiff is the holder of the right to an unregistered Community design in each of the KM top, KM blue shirt and KM brown shirt. The evidence adduced and the submissions made by the parties raise a number of discreet issues within that primary issue on the application of the Regulation. These are the first contested proceedings on the Regulation in Ireland.

Council Regulation (EC) No 6/2002

25 The Regulation was made on 12th December, 2001, and came into force pursuant to article 111 thereof in March, 2002. The Regulation is made pursuant to article 308 of the Treaty establishing the European Community and creates a new Community design which is directly applicable in each Member State.

26 The provisions of the Regulation relevant to the issues in these proceedings are:

27 Recitals:

1. "(14) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the

   design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

2. (16) Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. On the other hand, there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.

3. (17) This calls for two forms of protection, one being a short-term unregistered design and the other being a longer term registered design.

4. (19) A Community design should not be upheld unless the design is new and unless it also possesses an individual character in comparison with other designs.

5. (21) … It is appropriate that the unregistered Community design should,

   however, constitute a right only to prevent copying. …"

   "Article I

   Community Design

   1. A design which complies with the conditions contained in this Regulation is hereinafter referred to as a `Community design'.

   2. A design shall be protected:

   1. (a) by an `unregistered Community design', if made...