NATIONAL: A court case involving high-profile fashion brand Karen Millen could have far-reaching consequences for Australian fashion labels selling across Europe, a leading Melbourne law firm has warned.
The London-based womenswear label recently made fashion history when it became the first apparel brand to successfully test unregistered Community Design Rights in an Irish court.
The unregistered Community Design Right (CDR) provides all designers releasing garments in the European Union (EU) with automatic design protection for three years from the date the garment is first available in any of the 27 EU member countries.
Japan has regulations on par with the EU ruling while the United States is in the process of considering whether to introduce similar rights.
In the case of Millen, her claim related to infringement of rights concerning three garments which were designed in 2005 and released for sale across the UK and Ireland in December that year.
In 2006 Millen discovered that Irish retail chain Dunnes was offering for sale three garments – a black knit top, a blue striped shirt and a brown striped shirt – very similar to her own.
Millen began legal action claiming infringement of the label’s unregistered CDR. Initially, she also alleged copyright infringement and “passing off”, but these were not pursued at trial.
At the hearing, the retailer conceded it had produced the garments by copying Millen’s originals but argued her designs were not protected by an unregistered CDR.
In seeking to clarify whether Karen Millen had the benefit of CDR protection, the judge found the overall impression produced by the Millen garments “clearly” differed from the Dolce & Gabbana and Paul Smith “prior” designs submitted by Dunnes in an effort to invalidate the unregistered design rights she claimed.
The court held Millen was entitled to orders restraining Dunnes from selling or disposing of its Millen-inspired garments.
It also ordered an account of the profits earned by Dunnes from the sales of the infringing garments.
Middletons senior associate Jonathan Feder – whose law firm represents a number of high profile Australian fashion labels – said the case should give nervy Australian labels comfort that it was possible for them to protect their designs in the EU, whether they are registered or not.
While he was unaware of any Australian labels undertaking similar action, Feder said he hoped the decision would encourage more Australian labels to apply for a formal registered CDR, which provided protection for an initial period of five years but could be renewed for a period up to 25 years.
Feder said while action of this nature had previously been settled before court, he now anticipated more cases of this kind.
“We anticipate that in the future there will be more cases of designers seeking to enforce the protection conferred by the unregistered community design right by instituting proceedings against retailers who copy their designs in the EU,” he said.
“It is likely there will be further cases as the recent case issued by Karen Millen was really a test case and designers can now see that they can succeed in bringing actions such as these.”
In a nutshell
Australian designers releasing garments in the EU now have the benefit of an automatic unregistered Community Design Right that protects their garments against unauthorised copying for a period of three years from the date the garment is first made available to the public in the EU. Unregistered design rights are unique to the EU and are not available in Australia, where garments must be registered pursuant to the Australian design registration system.