Original Beauty Technology Company Ltd & Ors v G4k Fashion Ltd & Ors

UK unregistered design right is concerned with the shape and configuration of an article and does not depend on colour. For Community unregistered design right, however, a colour difference may alter the overall impression made on the informed user. The question is whether the colour would strike the informed user sufficiently to produce a different overall impression, assessed alongside the other visual features of the design. A court may revisit and revise a judgment before the final order is perfected where doing so accords with the overriding objective. Where the remaining issues can be resolved without a further trial, proportionality may justify providing additional guidance rather than reopening the whole dispute.

The claimants alleged infringement of UK unregistered design rights and Community unregistered design rights in garments marketed by the defendants, together with passing off. In the Main Judgment, [2021] EWHC 294 (Ch), the court found infringement in relation to seven of 20 selected garments and dismissed the passing off claim.

After the form of order hearing, the defendants identified an alleged omission concerning colourways for four garments. The court considered whether further findings were required and whether it could revisit the judgment before perfection of the final order. The central issues were the legal significance of colour for UK and Community unregistered design rights and the appropriate disposal of the remaining claims.

1. Power to revisit judgment. The court held that it could revisit and revise its judgment before the final order was perfected where this was consistent with the overriding objective of dealing with the case justly. The parties did not dispute that power. The court relied on In Re L (Children) (Preliminary Finding – Power to Reverse) [2013] UKSC 8; [2013] 1 WLR 634.
2. UK unregistered design right. The court confirmed that UK unregistered design right relates only to the shape and/or configuration of the article. It therefore prevents sales of the relevant garments in all colourways where the underlying shape or configuration infringes.
3. Community unregistered design right. The relevant question was whether the colourway would strike the informed user so that the garment produced a different overall impression from the claimant’s design. Colour differences were sufficiently significant for D2 in sage, D12 in rose, and D35 in blue to avoid Community unregistered design right infringement when compared with the relevant claimant garments. By contrast, the difference between black and mocha for C13 and D13 was too small to strike the informed user. The other striking aspects of the garment shapes meant that D13 in mocha infringed both rights.
4. The court provisionally maintained its view that a further trial concerning any unresolved remaining garments would likely be disproportionate, while providing additional colourway guidance to assist agreement.

The judgment describes earlier decisions in the same proceedings:

• High Court (Chancery Division): the Main Judgment, [2021] EWHC 294 (Ch), determined infringement in 20 selected garments and dismissed the passing off claim.
• High Court (Chancery Division): following the form of order hearing, a short judgment on declarations of non-infringement was given in [2021] EWHC 836 (Ch). The present judgment supplied further colourway findings.