G-Star Raw Cv v Rhodi Ltd & Ors

UK unregistered design right protects the identified shape or configuration of an article or part of an article, not general design ideas. Infringement requires copying so as to produce articles exactly or substantially to the protected design. The comparison is objective and must focus on the design as pleaded, while allowing for insubstantial changes. Similarity and access may raise an inference of copying, but the claimant retains the burden of proof. For secondary infringement, actual knowledge or objectively assessed reason to believe is required. Corporate knowledge may be assessed by reference to employees delegated responsibility for the relevant design, manufacturing, importing or marketing activities.

G-Star claimed infringement of UK unregistered design rights in the Arc Pant against eight defendants. The claim concerned nine Voi-branded jean styles, alleged to have been imported, possessed, marketed or sold in the United Kingdom. G-Star relied on five aspects of the Arc Pant’s shape and configuration and alleged copying, secondary infringement and common design.

The defendants denied substantial reproduction and copying. They argued that the styles reflected general fashion trends and that the relevant companies and individuals lacked the necessary knowledge. The court determined subsistence and ownership, substantial reproduction, copying, secondary infringement, knowledge, joint tortfeasor liability and the counterclaim for repayment under an earlier bank guarantee.

1. Subsistence and substantial reproduction. Design right subsisted in the five identified Arc Pant Designs and was owned by G-Star. The claimant was entitled to identify a part of an article as the design relied upon, but the scope of the claim had to be defined accurately.

2. The statutory test under Copyright, Designs and Patents Act 1988 required copying so as to produce articles exactly or substantially to the design. It was distinct from the copyright test. The court compared both the pattern pieces and the finished garments. The differences in the Rhodi Styles were insubstantial and the relevant parts, as well as the garments overall, were substantially the same as the Arc Pant Designs. Generalised ideas such as three-dimensional or twisted-fit jeans were not protected.

3. Copying. The striking similarities, the unusual and idiosyncratic nature of the design, and the defendants’ access to Arc Pant garments raised a rebuttable inference of copying. The defendants did not provide a satisfactory account of the design process and failed to rebut that inference. The Rhodi Styles were copied from the Arc Pant Designs.

4. Secondary infringement and knowledge. Under sections 227 and 228, an article could be infringing where its manufacture in the United Kingdom would have infringed the design right. Reason to believe required knowledge of facts from which a reasonable person would arrive at the relevant belief, after allowing time for evaluation. The material individuals included those delegated responsibility for design, manufacturer liaison, ordering, importing and marketing. Salim Bux, and by inference Dale Thorpe, had actual knowledge or reason to believe that the Rhodi Styles were infringing articles.

5. Rhodi Limited, Rhodi Inc. Imports Limited, Rhodi Marketing LLP and Rhodi Suppliers Limited participated in the material acts of secondary infringement. The extent of Rhodi Marketing LLP’s participation was left for the inquiry as to damages or account of profits.

6. Joint tortfeasor liability. The individual defendants were not shown to have intended, procured or shared a common design for the infringements, nor to have had the requisite knowledge or reason to believe. The claims against them failed.

7. The claims against the First, Second, Fourth and Fifth Defendants succeeded. The claims against the Third, Sixth, Seventh and Eighth Defendants failed. The counterclaim was dismissed. The parties were directed to agree a form of order.