Bodycon beware: how passing off fails boutique fashion

United Kingdom

Summary

In Original Beauty Technology Co Ltd and other v G4K Fashion Ltd and other, David Stone (sitting as Deputy High Court Judge) ruled that the defendant had infringed the claimants’ unregistered design rights and the circumstances of the infringement justified an award of additional damages. However, there was not enough evidence of confusion (or a likelihood of confusion) to establish passing off.

Facts

The claimants’ luxury womenswear brand, House of CB, is known for its “bodycon” and “bandage” dresses which have been worn by celebrities such as Beyoncé and Jennifer Lopez. The claimants claimed that the defendants’ brand, Oh Polly, copied 20 of their designs and that the defendants had also attempted to pass off Oh Polly as a sister brand to House of CB, by copying the claimants’ “business model, social media, marketing, packaging and presentation (including the same models and locations for photoshoots)”.

Designs

The defendants accepted that the claimants’ designs may have been referenced in the creation of the complained-of Oh Polly garments, but they contended that they were not copied.

The court was satisfied that the defendants sending images of the claimants’ dresses to factories for reproduction was “copying”, as the resulting products were accordingly made exactly or substantially to the claimants’ designs. Seven of those designs therefore infringed the claimants’ UK unregistered design rights. The court also accepted that the claimants’ Community unregistered design rights in the same seven designs were infringed by the defendants’ garments, which produced the same overall impression as the claimants’ garments on the informed user.

Passing off

Regarding the passing off claim, the claimants argued that despite the defendants trading under a different brand name, the get-up used was so similar that consumers would think Oh Polly and House of CB were sister brands. The claimants provided evidence of the defendants using the same models and shooting locations just weeks after the claimants’ own campaign. Additionally, they provided evidence of online comments from consumers who had identified that the defendants’ marketing strategy significantly resembled the claimants’ marketing strategy. Further, the defendants’ disclosure included emails that specifically referenced the House of CB photoshoots they wished to emulate, as well as particular poses that they wanted their models to recreate from previous House of CB campaigns.

The defendants counter-argued that the similarities between the brands and their marketing styles were commonplace in the online fashion space and consumers would not mistake Oh Polly as a sister brand of House of CB.

Despite the finding of infringement of the claimants’ design rights and the claimants’ evidence in relation to passing off, the court rejected the claim for passing off. Although the court recognised that the defendants had taken steps to present their brand in a similar manner to the claimants’ brand, it was held that there was no passing off as there was no evidence that consumers were confused about the commercial origin of the garments being sold by the defendants. In his judgment, David Stone acknowledges that the “defendants have been able to ride on the coat-tails of the claimants' successful business model, and rather than investing in their own development, or spent money and time trialling different models, styles, locations, packaging etc, they have obtained an advantage by copying a successful competitor.” However, he reluctantly rejected the claim of passing off as the claimants’ argument had essentially been based on evidence of “unfair competition” and not misrepresentation. Noting that “passing off is not a tort of unfair competition”, he concluded that there was insufficient evidence that consumers would consider House of CB and Oh Polly to be sister brands.

Comment

This case serves as a reminder of the limitations and challenges of successfully establishing passing off, even in circumstances where it appears that the defendant deliberately attempted to “ride on the coat-tails” of a claimant’s successful business model, commercial get-up or marketing style. Passing off is distinguished from mainland European concepts of “unfair competition” or “free riding” by the strict requirement for misrepresentation, which is notoriously difficult to prove.

The claimants’ passing off claim focused on the ways in which the defendants had likened its branding to the claimants’ branding, including by the deliberate mimicking of the claimants’ promotional materials. However, the judgment makes it clear that such activity is not unlawful as such, unless it also creates confusion in the minds of consumers. This highlights that the test for passing off remains firmly focused on evidence of consumer confusion, and places little weight on evidence of commercial and marketing activity that is deliberately aimed at ‘piggy-backing’ on another trader’s business model.

The reluctancy in David Stone’s rejection of the claimants’ passing off claim reveals a degree of frustration that, in some circumstances, the law of passing off may provide an inadequate remedy in cases of commercial practices that are considered unfair, but which do not mislead consumers.

Passing off may therefore provide limited relief to businesses in this new age of fiercely competitive branding and marketing in the fashion sector, where consumers are growing more accustomed to seeing ‘lookalike’ brands and becoming increasingly savvy at recognising them, without being misled. It remains to be seen, however, whether the shortcomings of passing off as an unfair competition remedy will lead to a shift towards the tort ultimately accommodating claims based less on evidence of confusion, and more on evidence of deliberate “free-riding”.

Co-authored by Abigail Atoyebi