Important lessons on unregistered design right from the fashion industry
2 April 2015
A recent High Court case (G-Star Raw CV v Rhodi Ltd & Others  EWHC 216 (Ch)) has provided helpful guidance on the assessment of unregistered design right infringement in the UK.
This case, one of few fashion designs cases that has reached the High Court in recent times, saw G-Star, a leading European denim fashion brand and owner of the ARC Pant, bring action against Rhodi, the owner of the ‘Voi’ brand. G-Star was successful in proving that nine jeans styles sold under the Voi brand infringed its design rights and that four Rhodi companies were liable for the infringement.
In accordance with Section 213 of the Copyright, Designs and Patents Act 1988 (CDPA), design right is “a property right which subsists in accordance with this part in an original design”. In the CDPA, ‘design’ is defined as meaning the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
An accepted consequence of this part of the CDPA is that an owner can select one or more parts of the article and claim design right for those parts. This means that defendants in design right infringement actions will only know what is asserted to be the design right(s) in an article once a letter before action or statement of claim is served. The pleadings of the claimant in such cases are, therefore, of particular importance.
In this case, G-Star relied upon design right in 5 aspects of the Arc Pant (“the Arc Pant Designs”):
i) the shape of each of the legs of the ARC Pant;
ii) the shape of a third pattern piece;
iii) an accentuated knee portion;
iv) a foreshortened back panel; and
v) the twisted leg configuration.
By providing a clear and detailed account of the design process which led to the creation of the Arc Pant, supported by witness statements and contemporary documents (including original pattern pieces) G-Star were able to persuade Richard Spearman QC (sitting as Deputy Judge of the Chancery Division) that not only did unregistered design right subsist in the Arc Pant Designs, but also that G-Star was the owner of the rights.
A person who is entitled to unregistered design right has the exclusive right to reproduce the design for commercial purposes by making articles to that design or by making a document recording the design (Section 226 of the CDPA). Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to the design.
Since in this case, the design right subsists in parts of the article (rather than the whole pair of jeans), Richard Spearman QC pointed out that it was necessary to firstly show that the parts of the jeans in which design right subsists has been incorporated into the Voi jeans and secondly show that the infringing jeans has been produced “exactly or substantially” to the copied design.
Whilst there are two separate criteria to be assessed in determining whether or not there is an infringement of design right: (1) whether articles have been made exactly or substantially to a design, and (2) whether a design has been copied; there is an inter-relationship between these issues. If there is a substantial similarity between the defendant’s design and that of the claimant, for example, there may be an inference of copying. In contrast, if an article has been copied it is more likely that the articles are substantially similar.
The burden of proof of copying, which normally resides with the claimant, was reversed in this case since G-Star were able to demonstrate that there was sufficient similarity in the Arc Pant Designs and the allegedly infringing jeans and that the defendants had prior access to the work.
Based on the evidence given, it was concluded that there were too many similarities between the ARC Pant Designs and the Voi jeans for the cutting pieces and resulting shapes of the finished products to be a coincidence. Furthermore it was observed that Rhodi failed to provide a satisfactory explanation of how the Voi styles were designed and were not able to rebut the inference of copying. Accordingly, it was concluded that the similarities between the Arc Pant and the Voi styles arose from copying and that a number of the defendants were liable for the infringement.
The importance of defining the parts of a product in which unregistered design right subsists when bringing an action for infringement, together with and the value of strong evidence of an independent design process for products (both for design owners wishing to enforce their rights and alleged infringers wanting to defend their products) are clear from this case.
The Designs group at Withers & Rogers are experienced in advising on both aspects of unregistered design rights.
Advanced Engineering group
If you require further information on anything covered in this briefing, please contact Jennifer Unsworth (email@example.com; +44 1926 310 700) or your usual contact at the firm.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, April 2015