Follow us

Menu
PARTNER WITH USFREE NEWSLETTER
VISIT TheIndustry.beauty

Tahir's Tips: The Deal with Unregistered Design Rights

Tahir Basheer
11 July 2014

At Sheridans, we often get calls from designer clients or brands that have seen their designs copied (and on sale in retail outlets without their knowledge or consent) and they want to know what they can do about the situation. The recent case where Karen Millen Fashions Ltd. took Dunnes Stores to the European Court of Justice is interesting, proving that unregistered design rights are a powerful legal tool that can be wielded.

Unregistered design rights are often overlooked as a form of intellectual property protection with things like copyright and trademarks usually stealing the limelight. In the UK unregistered design rights can be used to protect the shape and configuration of a product. However, unregistered design rights can also apply at European Union wide level and this can provide protection for the appearance of a product or article resulting from the lines, colours, texture and/or materials and/or from the ornamentation and surface decoration of a product. In addition to registered design protection, copyright and registered trademarks, EU unregistered design rights or ‘unregistered community design rights’ can be a helpful tool for fashion designers to protect their designs with.

 

What are unregistered design rights?

As the name suggests, unregistered design rights, in a similar way to copyright, are not registered. For unregistered community designs, protection arises when the design is made available to the public provided that the design in question is ‘new’ (i.e. no identical design has been made available to the public) and possesses ‘individual character’ (i.e. the overall impression an informed user, who has some knowledge of the relevant design field, gets from the design is different to the overall impression they get from any other publicly available design).

 

How long does it last?

Unregistered community design rights protect a design for three years from the date on which the design was first ‘made available to the public’. ‘Made available to the public’ can come about through prior marketing, publicity, exhibiting at a trade show or simply using the design. Designers should therefore think carefully about where, when and to whom they show their designs to.

 

What happened with Karen Millen?

The European Court of Justice has recently been asked to comment on how the law relating to unregistered community design rights should be interpreted. The initial case from which the ECJ was asked to comment involved a dispute between Karen Millen Fashions Ltd. and Dunnes Stores, a retailing group in Ireland that sells women’s clothing. Karen Millen brought a claim against Dunnes for infringement of its unregistered community design rights in two items of clothing, a striped shirt and a black knit top. Dunnes admitted copying the garments and acknowledged that the designs of the two items it copied were new. However, Dunnes argued that unregistered community design rights did not apply to the items in question as they did not have individual character, and that the burden of proof to show the garments had individual character fell on Karen Millen.

 

What the court says...

The ECJ concluded that:

1. 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 by one or more earlier designs, taken individually.

2. Designers are not required to actually prove that their design has individual character but merely indicate what element or elements of the design concerned they consider give it its individual character.

 

What Tahir says...

This case will help to give greater protection to holders of unregistered community designs, something which is of particular importance within the fashion industry where designs often have short shelf lives. The ECJ's guidance on what fashion designers are obliged to do for an unregistered design to be presumed valid is useful as it confirms the commercially sensible approach that designers only have to identify the features of their design which they consider give it individual character. This is something that is good for fashion designers as it makes it easier for them to prove that a design of theirs is protected by unregistered community design right and can therefore prevent people from copying their design.

As with all unregistered designs, the strength of the case will depend on the evidence. Therefore, where designers have signature pieces, I always recommend and help them obtain registered design protection to provide a stronger basis for preventing third party copying.

 

For more information on Industry member, Tahir visit his personal partner page on the Sheridans website. To contact him directly, visit The Industry Directory, email [email protected] or telephone 020 7079 0103.

Free NewsletterVISIT TheIndustry.beauty
cross