Original Beauty Technology & Ors v G4K Fashion Ltd & Ors

UK unregistered design right infringement requires copying and production of an article exactly or substantially to the protected design. Copying may arise from more than one source; an alleged prior conception does not form part of the legal definition of copying, although it may bear on proof. The comparison is with the design as a whole.

For Community unregistered designs, infringement requires copying and the absence of a different overall impression on the informed user. The assessment is multifactorial, including the sector, informed user, designer’s freedom, technical features and the relative importance of features. A passing off claim based on a claimed sister-brand connection requires goodwill, an actionable misrepresentation and damage. Deliberate emulation may support an inference of deception, but cannot replace proof that a substantial number of consumers were misled.

The claimants operated House of CB and Mistress Rocks, selling bodycon and bandage clothing. They alleged that the defendants, trading as Oh Polly, infringed UK unregistered design rights under the Copyright, Designs and Patents Act 1988 and Community unregistered design rights under Regulation (EC) No 6/2002. They also alleged passing off based on similarities in garment design, business model, websites, social media, models, photoshoot locations, packaging and branding.

The trial concerned 20 selected garment pairs, with claims concerning a further 71 garments stayed. The central issues were whether the claimants’ designs were valid, whether the defendants had copied and infringed seven of them, whether the defendants’ business misrepresented a sister-brand connection, and whether additional damages were available.

1. Design validity. None of the 20 claimant designs was shown to lack originality in the copyright sense or to be commonplace for UK unregistered design right. None produced the same overall impression on the informed user as the prior designs relied upon for Community design right. The validity challenges therefore failed.
2. UK unregistered design right. Copying requires a causal link between the earlier design and the later design. The claimant’s design need not be the only source. Copying from two or more designs remains copying. The proposed requirement that the defendant must not have conceived the design before seeing the claimant’s design was rejected as a definition of copying, although such matters may be relevant to proof. An article is made substantially to a design by an objective comparison of the alleged infringing article with the design as a whole; copying a feature or combination of features alone is insufficient.
3. Community unregistered design right. The court applied the six-stage assessment in Cantel. The informed user was a particularly observant user of women’s clothing, familiar with bodycon and bandage fashions and comparing designs directly. Within the practical constraints of fit and wearability, the designer had almost complete freedom. Front features generally carried greater weight than rear features, and the garment as worn mattered more than its appearance on a hanger.
4. Infringement findings. The defendants copied C2, C4, C12, C13, C35, C61 and C91. D2, D4, D12, D13, D35, D61 and D91 were made substantially to those designs and infringed UK unregistered design right. The relevant Community design claims also succeeded for D2, D4 in cream, D12, D13, D35, D61 in brown and D91 in black. The remaining design claims failed.
5. Passing off. The claimants established goodwill in some pleaded indicia, including aspects of their designs, use of models, locations, GIFs and Instagram presentation. The defendants intentionally emulated aspects of the House of CB brand. Nevertheless, only one social-media post clearly asserted a House of CB/Oh Polly relationship, and the evidence did not establish that a substantial number of consumers assumed a trade connection. The misrepresentation limb therefore failed. Passing off is not a tort of unfair competition.
6. Additional damages. Section 229(3) of the CDPA applied to the UK design infringements. The defendants’ conduct in taking images of the claimant designs and sending them to factories for reproduction was sufficiently flagrant, amounting at least to an attitude of indifference to the rights of others. Additional damages were also available for the Community design infringements through Article 89(1)(d) of the Design Regulation.
7. Disposition. The claim succeeded in part on design infringement and additional damages. The passing off claim failed. The court reserved the form of order and indicated that the findings might assist resolution of the 71 stayed garment claims.