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House of Copycats: infringing designs, but no passing off

Posted on 30 March 2021

In Original Beauty v G4K, the High Court found unregistered design infringement and awarded additional damages for the flagrancy of the infringement, but with clear reluctance found that a claim for passing off based on copying many of the aspects of the Claimant's business and marketing was not made out. This decision provides helpful guidance on where referencing or inspiration in the fashion industry ends, and unlawful copying and infringement of design rights begins. It also illustrates how challenging it can be to succeed in passing off proceedings relating to a style of branding and marketing.

The Claimants are a retail fashion brand targeting the young, female market and specialising in "bodycon" dresses.  They have been commercially successful under the brand 'House of CB' and the sister brand 'Mistress Rocks'.  The Defendants are a competitor selling similar garments online under the brand 'Oh Polly'.

Unregistered design right infringement

The Claimants alleged that the Defendants had copied 91 of their garment designs, in infringement of their UK and Community unregistered design rights. The Deputy High Court Judge, David Stone, decided the case based on 20 selected garments.

The Defendants argued that the Claimants' garments were not protected by unregistered design rights because they were themselves copies of high end third party designs from designers such as Hervé Léger. This argument was rejected. The Claimants' early designs did copy famous designers, but that practice stopped when the Claimants set up their own design company several years ago. Moreover, there was clear contemporaneous evidence of an independent design process in relation to the 20 garments in issue: the Claimant created mood boards of magazine and internet images and fabric swatches for each season that it kept up in its studio for around 6 weeks whilst garments were designed and fitted that set the tone of the entire design process.

The Defendants admitted that nine of their garments were designed using the Claimants' garments as "references", but said that they were not copied because the idea for their garment was conceived before the Claimants' garment was used as inspiration. The Defendants' designer was a key witness as to the design process. In her written evidence, she said that her design process was designing garments in her head (because she could not draw), collating digital mood boards on Dropbox and giving her factory images of existing garments to give them an idea of what she wanted made.

However, this evidence fell apart at trial: under cross-examination the Defendants' designer admitted creating the Dropbox mood boards in 2020 solely for the litigation, and there was no other evidence of an independent design process. However, there was evidence of the Defendants' designer giving images of the Claimants' garments to their factory, and so the Court found the Defendants' design story to be a fabrication and that the witness had asked the factory to directly reproduce the Claimants' garments. The Court went on to conclude that the Defendants had infringed both Community and UK unregistered design rights in seven of the Claimants' garments, and awarded additional damages given the flagrancy of the Defendants' copying – their designer ought to have known (if she did not actually know) that such activity was unlawful.

Passing off

The Claimants also alleged widespread copying of other aspects of their business – social media, marketing, packaging and overall "getup" – and argued that this amounted to passing off. The Claimants argued that by copying so many aspects of their business, the Defendants had misrepresented to the public that 'Oh Polly' was a sister brand of House of CB.  The evidence showing the degree of similarity between the branding, image and getup of the respective brands was striking.  The Defendants had conducted photoshoots on the same locations as the Claimants, with the same backdrop – they had even hired the same models. Other more conventional aspects were also similar – such as the look and feel of the website, and the colours used on the packaging.

Even though the Deputy Judge had already found copying in relation to the design claim, when it came to passing off he found – with clear reluctance – that although the Claimants had established goodwill, they had not shown that sufficient members of the relevant public would be deceived into believing that the Defendants' business was connected with that of the Claimants. This was notwithstanding the Claimant's argument that in the fashion industry many different brands may share a trade connection – so-called "diffusion lines" or "sister brands" being common. The Deputy Judge found that some consumers had been "caused to wonder" whether there may be a connection; but there was no evidence that a substantial number of consumers had been deceived or misled into believing the two brands to be connected.  Therefore, while it was clear that the Defendants had "ridden on the coat tails" of the Claimants' brand, the second limb of the classic trinity for a successful passing off action had not been made out.

The Claimant's evidence included social media posts such as "Do you also ownOh Polly”? they have a very similar style to House of CB" and "Hi. Is Oh Polly part of House of CB company? I’ve seen many of their designs are very similar to yours".  However the Deputy Judge did not consider this evidence alone (there were nine similar posts in total) to show that a substantial number of consumers would be deceived.  This demonstrates how challenging it can be to establish passing off in relation to a style of branding and marketing, particularly where clearly distinct brand names are used – even where there is clear copying. 

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