On 19 November 2020, the Intellectual Property Enterprise Court (IPEC) handed down a decisive judgment in Freddy SPA v HUGZ Clothing Ltd & Ors  EMHW 3032, which could see brand owners, especially in the fashion industry, relying on an arsenal of IP rights in enforcement actions. Not only did Deputy Judge David Stone uphold claims for passing off, infringement of patent and unregistered design rights, but he found that post-sale confusion can amount to passing off, indicating that brand owners may enjoy protectable goodwill in a product throughout its life and not just at the point of sale. This decision will also assist fashion brands in protecting their distinctive designs against copycats even where the brand name or logo itself is not copied.
The claimant, Freddy SPA (Freddy) manufactured and distributed jeans under the brand “WR.UP”, marketing the products as “body enhancing” jeans, said to give the wearer “the appearance of slimmer hips, whilst simultaneously lifting and separating the buttocks”. The defendant, HUGZ Clothing Ltd (Hugz), previously admitted copying the WR.UP jeans and marketing the copies as their own branded jeans. Having reached settlement in 2019, the defendant launched a second version of the Hugz jeans. Freddy commenced proceedings for breach of the settlement agreement, infringement of the patent and unregistered design rights, and in passing off. Hugz denied infringement, challenged the validity of the patent and unregistered designs, and counterclaimed for groundless threats, but took no part in the trial (meaning that there was no opportunity to narrow the issues pre-trial and that the claimant's evidence was uncontested at trial).
Freddy claimed infringement of various unregistered design rights, including the shape of the WR.UP jeans when worn, in particular the shape surrounding the buttocks as they claimed such parts of the jeans are “liable to impose a distinctive shape upon the wearer”. The judge disagreed on this point, finding that the shape of a pair of jeans when worn is “infinitely variable depending on the particular person wearing the jeans” and, as such, is not a protectable design. Save for the when worn design, the judge found that the remaining unregistered design rights were protectable because, as defined, they were “not reliant on the human body shape” and included “the elastic nature of the fabrics and materials making up the WR.UP jeans”. The judge highlighted that the notion of shape and configuration in unregistered design law is a broad one and ought therefore to encompass movement. As such, the elastic nature of the fabrics and materials was enough to constitute the shape and/or configuration of an article and therefore found to be protectable. Accordingly, the judge found that the Hugz jeans were made substantially or exactly to Freddy’s valid and subsisting design rights and were therefore infringing (save for the when worn design).
Of particular interest to designers and fashion brands is the clarification of the must-match exclusion. Hugz sought to argue that there was no unregistered design in respect of the Freddy jeans as, when worn, the shape of the jeans is dependent on the appearance of another article (namely the human body) of which the jeans were intended by the designer to form an integral part. The judge rejected this, on the basis that even if the human body was considered to be an ‘article’ (noting that this point was left undecided), there was no integration of the jeans with the human body to form a single article. As such, it is clear that the must match exclusion applies only where the product is designed to form a single article, by contrast with the must-fit exclusion.
In addition to relying on design rights, Freddy was also able to establish infringement of its patent, both on a normal interpretation and under the doctrine of equivalents. There was only one minute difference between the first Hugz jeans (previously admitted by Hugz as infringing) and the second (with which this case is concerned) – the first jeans had a curved seam at the base of the pockets, joining two pieces of fabric, whereas the second jeans had a single piece of fabric. Claim 1 of Freddy’s patent described the jeans as made up of three elements, each adapted to cover a particular area of the buttocks. Paying particular attention to the meaning of ‘element’, the judge did not deem it necessary to construe ‘element’ as meaning a totally separate piece of material. As such, following a normal construction of claim 1 of the patent, based on an interpretation of the words of the claim in the context of the specification as a whole, the judge found that the Hugz jeans still fell within the scope of claim 1 of the patent. The skilled person would nonetheless consider a single fabric connected by a bridge of fabric, instead of a seam, to be two distinct elements.
The judge went further, holding that in any event the Hugz jeans would have infringed under the doctrine of equivalents. Referring to expert evidence, the judge agreed that the Hugz jeans achieved “the same result in the same way as the patent”, the difference between the first and second Hugz jeans had “no practical effect on the way the invention works” and that “these considerations would [have been] known to the skilled team as at the priority date”.
Finally, Freddy also claimed passing off, relying on a combination of its brand elements, including, among other elements, a polished metallic badge pinned to the rear of the jeans, the curved seam of the pockets and the rear belt loop. In finding for Freddy, the judge stated that it was customary for women’s jeans to bear branding elements on the rear pockets and, as a result of Freddy’s significant marketing efforts, consumers were aware of such get up and had been educated that it was “an indication of origin”. Accordingly, the judge found that the minor differences between the WR.UP jeans and the Hugz jeans were insufficient to dispel the misrepresentation caused by the very similar branding elements, and even went so far as to say the Hugz jeans were “an obvious rip-off of the WR.UP jeans”.
Interestingly, as well as finding point-of-sale confusion on the facts, the judge also held that there was potential for post-sale passing off since a consumer intentionally purchases a knock-off product when buying the Hugz jeans because they want other consumers to believe that the jeans are in fact WR.UP jeans and associated with Freddy. Despite post-sale confusion being well-established in enforcement of trade marks only (and earlier case law suggesting it is insufficient for a finding of passing off), the judge relied upon a strikingly similar New Zealand case, Levi Strauss and Co and Another v Kimbyr Investments Limited 1 NZLR 332. In that case, the court found it irrelevant whether confusion concerning the red tab on the rear pocket of Levi’s jeans occurred at the point of sale or post-sale. Following the finding in Levi, the judge found that “the owner of goodwill in a product is entitled to have this goodwill protected throughout the life of the product, not just at the point of sale”. As the Hugz jeans continued to make misrepresentations to consumers when worn, with such misrepresentation causing damage to Freddy, Hugz was found to have passed off their jeans as/associated with Freddy’s at both point-of-sale, and post-sale.
This case could be significant for fashion brands when seeking to protect their designs. Not only was the claimant able to successfully enforce its unregistered design rights, but it was able to deploy a number of IP rights in addition to this. This finding serves as an encouraging reminder that fashion brands can have more than one tool to help combat copycat designs, either to be employed alongside a design rights claim or as an alternative where they are unable to rely on such rights. In particular, brand owners may be able to rely on passing off where an infringer has not used their brand name or logo and notably, the finding of passing-off in a post-sale context will be a welcomed additional tool in a brand’s arsenal to help contest copycat designs.
Co-authored by Aysha Kaplankiran.