Ahmet Erol v Posh Fashion Limited

A registered design is invalid for lack of individual character where earlier publicly available material produces the same overall impression on the informed user. Features not shown in, or apparent from, the registration cannot be relied on to distinguish the design. Colour may form part of a registration, but commonly used colours will not generally confer individual character. An unexceptional garment shape or placement of a design element may contribute little to the design’s distinctive character. Once a sufficient ground of invalidity is established, weaker alternative validity attacks and infringement need not be determined.

The claimant brought an action for infringement of two registered designs for a hoody and a T-shirt bearing the same London, Union flag and England legend. The defendant challenged both registrations on novelty and individual-character grounds, relying principally on a 1999 Urban Attitude brochure and a 2008 Lambert Souvenirs web image. It also relied on a KK Hosiery catalogue and advanced a limited non-infringement defence based on colour. The central issues were whether the prior material had been made available to the public and whether it produced the same overall impression as the registered designs.

1. Validity. Under section 1B of the Registered Designs Act 1949, a design must be new and have individual character. Individual character requires the overall impression on the informed user to differ from that produced by any design made available to the public before the relevant date.
2. Interpretation. The registered garments were unexceptional, as were the placement of the legend and the garment features. The principal potentially distinctive element was the London, Union flag and England legend. The registrations were in colour, so colour formed part of the designs, but the principally red and grey colours used were common and did not confer individual character. Fabric composition and whether the legend was embroidered or printed did not form part of the designs because those features were not indicated or apparent in the registrations [22]-[23].
3. Urban Attitude. The brochure genuinely dated from 1999. It contained the identical legend and indicated that it would be applied to a hoody and T-shirt. The garments were unexceptional, and any difference in colour made no difference. Even if the designs were novel over the brochure, their overall impression was the same, so both registrations lacked individual character [24]-[27], [35].
4. Lambert Souvenirs. The claimant accepted that the 2008 web image showed his product. The alleged differences in fabric, pockets, number of colours and embroidery were either irrelevant to the registrations or insufficient to alter the overall impression. The ‘066 design was therefore also invalid having regard to that prior art [28]-[31].
5. The court did not determine the weaker KK Hosiery attacks or the infringement issue because both registrations were invalid. The action accordingly failed [32], [36]-[38].