Karen Millen Ltd. -v- Dunnes Stores & Anor.
21 December 2007

High Court of Ireland Decision

The designs at issue are the following ones:



The plaintiff (Karen Millen Ltd.which carries on the business of producing and selling women’s clothing) claims that it is the holder of an unregistered Community design for each of the designs referred to above and that the defendants (“Dunnes Stores” which has a retail business in women’s clothing) have infringed same in the production and sale of the items referred to above.

Ms Justice Finlay Geoghegan said: "The use made (by Dunnes of the items) is an infringement of the plaintiff's unregistered community design and it is entitled pursuant to Article 19 of the regulation to prevent the defendant making use thereof."

It is the first case of its kind to be heard in Ireland under an EU regulation protecting new and individual designs.

One of the key preliminary matters decided was that of the onus of proof.

"In summary the conclusions which I have reached on the burden of proof in an action for infringement of an unregistered Community design pursuant to the Regulation are:

(1) Where, the plaintiff claims infringement of an unregistered Community design, the legal onus of proof is on the plaintiff to establish a right to the unregistered Community design and its infringement.

(2) There will normally be two distinct aspects of the claim to the right: the claim that the design right vests in the plaintiff and the claim that the design is an unregistered Community design.

(3) The onus of proving that the design right vests in the plaintiff is, and remains, on the plaintiff until proved in accordance with the normal civil burden of the balance of probabilities. Article 14 of the Regulation is relevant to how that vesting may be proved.

(4) Article 85(2) of the Regulation specifies the evidential burden which must be discharged by such a plaintiff in order that the Court treat the design as a valid unregistered Community design. That evidential burden is:

(i) evidence that the design has been made available to the public within the Community within the meaning of article 11(2); and (ii) evidence that the first date upon which it was so made available is within three years of the date upon which the plaintiff claims the right to protection to subsist for the purposes of the alleged infringement; and (iii) identification of those elements of the design which the plaintiff contends means that the total design produces a different overall impression on an informed user.

(5) If the Court finds that the plaintiff has discharged the evidential burden referred to in para. (4) above, then the Court treats the design as a valid unregistered Community design subject to the defendant’s challenge(if any ) to its validity.

(6) Where such a challenge is made(either by plea of invalidity or counterclaim) the onus shifts to the defendant to establish on the normal civil balance of probabilities that one or more of the grounds for invalidity specified in article 25(1) is made out. Where, as on the facts of these proceedings, the defendant denies validity by reason of a failure of the designs to meet the requirements of article 6 for individual character, then the burden of establishing that the design does not meet the requirements of article 6 is on the defendant.

(7) If the defendant’s plea of invalidity succeeds the Court ceases to treat the design as a valid unregistered Community design and no issue of infringement arises. If the defendant’s challenge to validity fails, the Court continues to treat the design as a valid unregistered Community design and moves to consider infringement. The burden of proving the infringement is on the plaintiff."

We will revert to you with regard the test of the "impression on the informed user" but, meanwhile, you may have a look at our post on Proter & Gamble case.