On 21 December 2007 the Dublin Commercial Court handed down a landmark judgment in a claim brought by Karen Millen against Irish retailer Dunnes Stores.  The judgment represents the first time a fashion house has successfully argued that look-alike garments infringe its design rights (this may also be the first claim of many, not least because Karen Millen’s owners have further pending claims against Dunnes relating to their other brands, Coast and Whistles).

Look-alikes are a growing problem across the fashion industry.  Encouraged by the emergence of “skinted or minted” features in the fashion press, consumers are increasingly seeking designer fashion with a High Street price tag.

However, as Karen Millen has shown, it’s not just the designer brands that are experiencing problems with look-alikes.  High Street retailers have also been hit; Monsoon, for example, reportedly settled with Primark in a look-alike claim regarding a Monsoon dress and top.  Although there have been other sabre-rattlings, with Chloe famously settling with the likes of Kookai and Top Shop, no look-alike case has yet reached the English Courts.  However the Irish case was brought under the Council Regulation (EC) No 6/2002 on Community Designs, legislation that is equally applicable in the UK.

In the recent case, Karen Millen claimed unregistered design rights in a black knit top, a two striped shirts.  Dunnes did not dispute that they had copied the designs, instead their primary argument was that no unregistered design right existed in them because they did not have the requisite individual character to qualify.

Put simply, a design qualifies for protection if the overall impression produced on an informed user differs from the overall impression produced on such a user by any design previously made available to the public.  Dunnes argued that a number of earlier garments contained at least on or more elements of Karen Millen’s knit top and shirts but the Irish Court made it clear that it is the design as a whole that must be looked at, rather than focussing on the individual elements of which it is comprised.  In this case, the overall impression on an informed user (judged to be a woman with a keen sense of fashion and a basic understanding of design limitations) differed from anything previously on the market and the Court held that unregistered design right was valid.  Given the similarity of Dunnes’ designs to the Karen Millen ones, and the fact that copying was not in dispute, infringement was established.

So, what is the significance of the Karen Millen case?  Importantly it sends a clear message that copying designs is unacceptable.  Designers will hope that the copycats will take heed and curb their copying habits; if not it is only a matter of time before they will find themselves up before the English Courts.  What may prove more problematic, however, is changing the attitudes of consumers and thereby reducing demand for look-alikes.  Davenport Lyons’ recent Counterfeiting Luxury Report 2007 found that only 39% of UK consumers believe that look-alikes damage designer brands (down from 45% in 2006).  This is a very worrying statistic for fashion houses.

Unfortunately it seems that, despite the welcome decision in the Karen Millen case, this problem is unlikely to disappear overnight.  It is therefore imperative you do as much as possible to protect yourself from those seeking to take advantage of your creative talents.  One such method is to register your design, particularly any must-have item (such as this season’s bag) or any repeated feature of a design (such as jeans pocket designs).  The costs of registration are low and protection for a registered Community design can be for up to 25 years (as opposed to only 3 for unregistered Community designs).  Further, where infringement of a registered Community design is alleged there is no need to prove that your design was copied; although that was not an issue in the Karen Millen case, this can often prove a stumbling block when relying on an unregistered right.

© Davenport Lyons 2008. All rights reserved.
This document reflects the law and practice as at March 2008. It is general in nature, and does not purport in any way to be comprehensive or a substitute for specialist legal advice in individual circumstances.