The High Court found that Dunnes Stores and Dunnes Stores (Limerick) Limited infringed Karen Millen Limited’s unregistered Community design rights in a black knit top and blue and brown striped shirts. The court rejected the defendants’ challenge to the designs’ individual character and said it would hear further submissions on the precise form of an order for an account of profits.
The proceedings began in January 2007 and were consolidated in February. At the hearing, Karen Millen pursued only its claim under the EU Community Designs Regulation. Its claims for passing off and copyright infringement were not pursued. The defendants no longer disputed that the Savida garments had been produced by copying the Karen Millen designs.
The designs were first offered for sale in Ireland and the United Kingdom in December 2005. The Savida garments were put on sale in Ireland by November 2006. The court found that the designs were developed by employees in the course of their work and that the rights vested in Karen Millen. It also found that the company had met the evidence required to have the designs treated as valid unregistered Community designs.
The defendants argued that the designs lacked individual character. The court said the comparison had to be between each complete design and identified earlier designs, rather than a hypothetical combination of features from several designs. It compared the tops with a Dolce & Gabbana grey knit top and the shirts with a Paul Smith blue striped shirt. The judge concluded that each Karen Millen design produced a clearly different overall impression on an informed user and rejected the validity challenge.
The court recorded that it was undisputed that the Savida garments fell within the designs’ scope of protection and resulted from copying. It concluded that their use infringed Karen Millen’s rights. The judgment said the company appeared entitled to an order restraining sale or other disposal of the Savida garments, delivery up of remaining stock, and an account of profits from their sale.
The court did not settle the exact scope of the profits account in the judgment. It asked counsel to address whether it covered sales by the second defendant alone or also by associated companies operating Dunnes Stores outlets. The judgment records the court’s conclusions and indicated relief; the precise form of that final order remained for determination.