Freddy SPA v Hugz Clothing Ltd & Ors

Patent claims should be construed in the context of the specification as a whole. An “element” need not be a wholly separate piece of material where the claimed technical arrangement is present.

Under the doctrine of equivalents, a variant may infringe where it achieves substantially the same result in substantially the same way, the difference would have been obvious to the skilled person, and strict compliance was not intended to be essential.

Passing off may arise from continuing post-sale confusion where product features operate as badges of origin and cause damage to goodwill. Unregistered design protection may cover movement and elastic characteristics, but not a method or principle of construction, must-fit or must-match features, or surface decoration.

Freddy SPA brought claims against Hugz Clothing Limited, CC Liverpool Limited and Christopher Kavanagh concerning a second version of HUGZ jeans. The defendants had admitted copying the claimant’s WR.UP jeans but did not participate at trial.

The claims concerned infringement of a patent for body-shaping trousers, infringement of unregistered designs under the Copyright, Designs and Patents Act 1988, passing off through similar rear branding, and breach of a settlement agreement. The defendants also pleaded patent invalidity and objections to design-right subsistence.

The central issues were whether the second HUGZ jeans fell within the patent claims, whether the pleaded designs were valid and infringed, whether the get-up caused actionable confusion including after sale, and whether the settlement agreement had been breached.

1. Outcome. The claimant succeeded in patent infringement, unregistered design infringement except in relation to the When Worn Design, passing off, and breach of the Settlement Agreement. Claim 1 of the Patent was not invalid for lack of novelty or obviousness.
2. Patent construction. “Element” in claim 1 did not mean a wholly separate piece of material. The claim was construed in the context of the specification as a whole, following the approach in Regen Lab SA v Estar Medical Limited and Ors [2019] EWHC 63 (Pat). The Second HUGZ Jeans therefore fell within the normal interpretation of claim 1.
3. Equivalents. Applying the approach stated in Actavis UK Limited v Eli Lilly & Co [2017] UKSC 48 and explained in Icescape Limited v Ice-World International BV and Ors [2018] EWCA Civ 2219, the judge held that the short bridge of fabric achieved substantially the same result in substantially the same way. The difference would have been obvious to the skilled team, and strict compliance was not shown to be essential. In any event, the variant would have infringed by equivalence.
4. Passing off. The claimant established goodwill, misrepresentation and damage, applying the established approach in Reckitt & Colman Products Limited v Borden Inc and Ors [1990] RPC 341. The similar rear branding was sufficiently distinctive to indicate origin, and the different HUGZ trade mark did not prevent misrepresentation. The reasoning in Levi Strauss and Co and Anor v Kimbyr Investments Limited [1994] FLR 335 was followed: actionable misrepresentation may continue throughout the life of the product, including after sale, where the get-up continues to connect it with the claimant and causes damage.
5. Design right. The When Worn Design was invalid as pleaded because the resulting shape varied with the wearer’s body. The JOTO Design was not invalid merely because it included elastic characteristics. Shape and configuration could encompass movement. The statutory exclusions for method or principle of construction, must-fit, must-match and surface decoration did not apply to the RSP Design, Inner Parts Design or JOTO Design.
6. Settlement Agreement. The Second HUGZ Jeans would infringe the Letter Designs and SA Design. An offer to take a licence of right limited available relief under section 239 of the CDPA but did not make the products non-infringing. The defendants were therefore in breach.

First-instance decision. No prior appellate decision is stated in the judgment.