An Unregistered Design Right?

Author:Mr John McKeown
Profession:Goldman Sloan Nash & Haber LLP

A recent decision of the European Court of Justice sheds new light on the unregistered design right that exists in the European Union and may make Canadians envious.

The Facts

The plaintiff in the case designed and sold women's clothing, which was both stylish and popular. The defendant is a substantial retailing group in Ireland who sells, among other things, women's clothing. In 2005 the plaintiff designed and commenced to sell in Ireland a striped shirt (in a blue and stone brown version) and a black knit top. The defendant purchased samples of these garments and had copies manufactured outside of Ireland and then began to sell them in its Irish stores in late 2006.

The plaintiff commenced proceedings in the Irish High Court and succeeded on the basis that it's unregistered design in the garments had been infringed. The defendant appealed from the judgement and continued to dispute the validity of the unregistered community designs. The appellate court stayed the appeal and referred questions to the Court of Justice of the European Union.

The Legal Framework

In the recitals to the E.U. regulation the following observations are made:

Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. On the other hand, there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.

This calls for two forms of protection, one being a short-term unregistered design and the other being a longer term registered design.

A community design should not be upheld unless the design is new and unless it also possesses an individual character in comparison with other designs.

In the course of its judgement the court clarified what was required to be shown in order to establish that a design had...

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