The primary answer to the question whether your unregistered Community design (UCD) is protected would be “YES“. The authors who are constantly in the process of creation can be relieved, as their rights to design works are protected for 3 years without registration. This is ensured by the unregistered Community design, a relatively new EU intellectual property object.
This is especially relevant to certain industries where the product’s design is fickle and its duration is not that important (e.g. the clothing industry, where designs are changing every season with every new collection).
UCD protection does not require any bureaucratic procedures, however, the design must meet the criteria applied to registered designs: a novelty and individual character. The latter criterion received attention on 19th June, 2014 when the Court of Justice of the EU analysed a case between Karen Millen FashionsLimited (KMF) and Dunnes Stores. The dispute arose between the famous British designer Karen Millen and the Irish supermarket chain Dunnes concerning the design imitation of a striped blue and beige colour shirt and a black knitted blouse.
In 2005 KMF created a striped blue and a stone brown colour shirts as well as black knitted blouses and put them on sale in Ireland. Dunnes representatives had bought this company’s clothing samples in one of the KMF outlets in Ireland, copied them outside of Ireland and in the end of 2006 began selling them in their stores in Ireland. Interestingly, Dunnes did not dispute that they had copied the design or that KMF design did not met the novelty criteria. However, they argued that KMF design did not have a protection, as it lacked an individual character within the meaning of the Regulation on Community designs, and that this criterion should have to be proved by KMF themselves. Dunnes claimed that KMF designs had been drawn from a number of other previous design features.
In these circumstances the Irish Supreme Court referred to the Court of Justice of the EU for the preliminary ruling. The latter presented an explanation that in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually. Generally, this provision means that during the assessment of the design’s individual character, its overall impression must be compared with other previous design, rather than a bundle of its individual characters. Hence, the Dunnes assessment was denied.
Another part of court’s decision negated Dunnes’ claim that the proprietor of the previous design have to prove that their design has an individual character. In order for a Community Design court to acknowledge an unregistered Community design valid, the proprietor of the design is not required to prove that their design has an individual character within the meaning of the article (6) of the Regulation on the Community designs. The proprietor only has to indicate the characters of the previously mentioned design, i.e. establish an appropriate character of the design (-s) which the proprietor finds unique.
Provisions formed in this court’s decision is very good news for the designers as well as other IP rights’ holders. The decision reaffirmed the right to the protection of the UCD which would help the rapidly changing design developers avoid the registration formalities. This will also free the proprietors from the responsibility to prove individual characters resulting in their prevention from the additional costs. Thus, these provisions will ensure the design developers the opportunities to protect their infringed rights.