19 July 2015, London
Unregistered design rights are an important IP right in the fashion industry, given that the lives of clothing designs are often short and may not justify the cost of design registration.
There has been a recent flurry of cases before the UK courts concerning rights in fashion designs, specifically unregistered design rights: G-Star Raw v Rhodi Ltd; Superdry v Animal (DKH Retail Ltd v H Young (Operations) Ltd); John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd; and Dalco v First Dimension. Of these four cases (decided between late 2014 and early 2015), three were heard in the Intellectual Property Enterprise Court (IPEC). Established in 2013, IPEC was intended to provide a less expensive and more streamlined alternative to intellectual property actions in the High Court. Employing strict cost recovery caps of £50,000 and taking a proactive approach to case management to reach a swift resolution, IPEC is widely considered to be meeting this aim.
Unregistered Rights in the fashion industry
Recent fashion cases
G-Star Raw CV v Rhodi Ltd & Ors  EWHC 216 (Ch)
Rhodi’s nine separate styles of jeans infringed G-Star’s unregistered UK design rights in its ‘Arc Pant’ jeans design, which was characterised by a highly architectural cut with an asymmetric tapered leg that turned around the human leg. The similarities were striking, there was evidence that Rhodi had used a sample of the Arc Pant to communicate design ideas to its manufacturers, and it was unable to produce evidence of independent design.
Superdry v Animal (DKH Retail Ltd v H Young (Operations) Ltd  EWHC 4034 (IPEC)
H Young’s Animal branded gilet infringed the unregistered design rights in parts of DKH’s Superdry branded hooded gilet. However, only secondary infringement by importing and selling was alleged (for which it must be shown that the alleged infringer knew or had reason to believe that the articles were infringing).
Therefore, while Superdry’s unregistered Community design rights were found to have been infringed, its UK unregistered design rights were only infringed from the date of Superdry’s cease and desist letter to Animal, as Superdry had produced no evidence to show that those in the clothing industry would otherwise know that copying a garment would constitute an infringement of IP rights.
John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd  EWHC 3779 (IPEC)
A dress fabric supplied to Marks & Spencer by Lee Ann did not infringe the copyright or unregistered Community design right in John Kaldor’s fabric as copying could not be proven. Lee Ann’s evidence of independent design was credible, and the similarities between the two designs were not so compelling as to point to unconscious copying.
Dalco v First Dimension  EWHC 760 (IPEC)
First Dimension’s ‘Daniel Rosso’ shirt infringed Dalco’s unregistered design rights in its ‘Dalco’ shirt design. The two were essentially identical, and First Dimension had no prospect of proving that its Daniel Rosso design pre-dated the Dalco shirt design, or any evidence of independent design.
Originally published in DesignWrites 6th Edition.
As well as working with some of the world's best known brands, Hilary also helps start-up and SME clients to identify and protect their IP. Hilary is an associate in our Intellectual Property practice, based in London.
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