© patents office 2007 the unregistered design right - the baby grows up! paul sheridan irish...

© Patents Office 2007

The Unregistered Design Right- the baby grows up!

Paul Sheridan

Irish Patents Office


• Birth of a new EU IP Right!

• Unregistered Community Design Right was officially born on the stroke of midnight on 6th March 2002 .


COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs.

“A unified system for obtaining a Community design to which uniform protection is given with uniform effect throughout the entire territory of the Community”

“Two forms of protection, one being a short-term unregistered design and the other being a longer term registered design”.


The Unregistered Community Design Right

A design shall be protected:

“by an ‘unregistered Community design’, if made available to the public in the manner provided for in this Regulation (Article 1(2)(a)).



Must be new (not previously available).

Must have individual character.



Scope includes:

any design which does not make a different overall impression on the informed user.

Protection for a period of three years from the date on which the design was first made available to the public within the Community.



While both registered and unregistered design rights confer on the right holder a right to exclusive use, an unregistered design right only permits the right holder to prevent use which results from copying the design.



Very quiet infancy.

Particularly suitable form of rights protection for industries (such as the fashion industry) where the life of a design is of a short duration

High turnover of goods Protection by registration not necessary



Little or no case law. Until 2007 when:



Fashion designer Karen Millen (KM) alleged that Dunnes Stores (Dunnes) had copied two shirts and a knit top from her collection and had manufactured these for sale.

Dunnes did not deny copying KM’s designs at trial. As the design right was not registered, KM had to

establish a valid unregistered design right to prove that the Dunnes clothes were unauthorised copies.

Discovery suggested that Dunnes bought and copied KM Products


What Do You Think?


Depending on the design, the notional "informed user" varies in each individual case.

The High Court opined that in this case, the informed user was "a woman with a keen sense of fashion, a good knowledge of designs of women’s tops and shirts previously available to the public, alert to design and with a basic understanding of any functional or technical limitations on designs for women’s tops and shirts".



Findings KM tops were compared to earlier designs:

– clearly made a different overall impression– so KM designs had “individual character”

Dunnes tops were compared with KM designs:– gave same overall impression– were considered to be within the scope of the

unregistered design right. Judge found Dunnes had infringed the designs rights of

KM



Judgement under appeal to Supreme Court. KM/Mosaic –two further cases against Dunnes. KM is seeking an account of the profits made by

Dunnes from selling the clothes. KM/Mosaic “pursued this case on a matter of

principle to protect the integrity of our designs and the creations of our talented designers”.

“intention of Mosaic Fashions to make a substantial donation to an Irish charity once monies are recovered”.

© patents office 2007 the unregistered design right - the baby grows up! paul sheridan irish...

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