The Intellectual Property Enterprise Court (IPEC)'s recent judgment in Freddy v Hugz Clothing Ltd & Ors is a rare case that runs the gamut of trade marks, designs and patent infringement, as well as contractual claims. Even more unusually, it is such a claim in the fashion industry, where disputes often do not often reach the Courts as the parties reach an out of court settlement.
Beyond that, the judgment provides useful guidance on a number of issues. In particular, the Court found that post-sale confusion can amount to passing off, which will be very helpful to fashion brands dealing with copycats of distinctive or influential designs, which do not copy a brand name or logo. It is worth noting that the Claimant had very strong evidence as to the get-up of its jeans and how it had educated its public as to that get-up; the Defendant meanwhile did not adduce any evidence and did not appear at the trial. However, the decision demonstrates the value in developing and promoting distinctive branding elements as part of a design, in addition to traditional word marks and logos.
Background
The Claimant, Freddy SpA, owns the brand WR.UP, a line of jeans it markets as "body enhancing". These jeans straddle the line between conventional outerwear and traditional shaping underwear. In what Freddy describes as a "dramatic departure" from the norm, the WR.UP jeans incorporate novel silicone inserts around the rear pockets in order to shape the body of the wearer, rather than the wearer having to use more common shapewear undergarments.
Above: depictions of the WR.UP jeans as set out in the patent
In 2012, Freddy had entered into a settlement agreement with the defendants, Hugz Clothing Limited (and others) as a result of Hugz having copied the WR.UP jeans and selling them under its brand name HUGZ. However, Hugz subsequently launched a second, slightly changed, version of these jeans. Freddy claimed that this breached the settlement agreement and amounted to patent infringement, UK unregistered design right infringement and passing off. Hugz counterclaimed for invalidity of the patent and unjustified threats of infringement proceedings, but took no part in the trial. Deputy Judge David Stone found for Freddy in respect of almost every single one of its claims.
Passing off
Freddy claimed goodwill in a particular get up of the rear of its jeans, including the combination of its polished metal badge and the position of that badge, the shape of the seams and a diagonal belt loop. Hugz had argued that the goodwill lay in the brands FREDDY and WR.UP that the jeans were sold by reference to, and not in the get-up.
The judge found for Freddy, noting that it is common for jeans to bear branding elements on the rear pockets. As a result of Freddy's significant marketing efforts (the majority of which highlight the rear of the jeans), consumers had been educated that such get-up was an indication of origin. The Court then found both misrepresentation and damage, relying on evidence of complaints from Freddy's distributors, a customer inquiry asking if Freddy had rebranded its product from WR.UP to HUGZ, and social media ads from former Freddy distributors who now stock HUGZ. In a damning conclusion, Deputy Judge Stone observed that the HUGZ jeans "are an obvious rip-off of the WR.UP jeans".
Interestingly, the judge found both pre- and post-sale confusion. Post-sale confusion (where a consumer knows they are purchasing an imitation product when they buy the goods, but they do so because they want other people to believe that the product is the original) is well-established in relation to registered trade mark rights. However a positive finding of post-sale confusion in the context of passing off had never been made by the English courts, and earlier case law (Bostick Limited v Sellotape GB Limited; Arsenal Football Club PLC v Reed) had suggested that post-sale confusion is insufficient for a passing of claim. However, the Court referred to a 1994 New Zealand High Court decision, Levi Strauss and Co and Anor v Kimbyr Investments Limited, which found it irrelevant whether confusion relating to Levi's iconic red tab on the rear of its jeans occurred at the point of sale of afterwards. On the arguments (including the lack of argument from Hugz) and evidence, including Freddy's evidence that individuals want to be seen in particular brands, the judge held that HUGZ jeans continued to make misrepresentations to consumers when worn, which caused damage to Freddy.
Design infringement
The judge found that all unregistered designs claimed by Freddy were valid, subsisting and infringed, save for one design. Freddy had relied on a design representing the jeans 'when worn'. The judge disagreed that this was protected by unregistered design right, holding that the shape of a pair of jeans when worn is not protectable because the shape is "infinitely variable" depending on the body of the person wearing the jeans.
This reasoning could apply to other wearable products that do not hold a stiff and immutable shape and are liable to change shape from wearer to wearer.
Patent infringement
The paucity of Hugz's evidence also did not help their case on patent infringement, which was established both on a normal interpretation, and under the doctrine of equivalents. Freddy's argument on the skilled team and common general knowledge was unchallenged and accepted by the court. Similarly, whilst the Hugz's Defence pleaded four pieces of prior art, all were fairly quickly disposed of.
Comment
Brand owners will be encouraged that Freddy successfully enforced its passing off rights in the get-up of its product without having to rely on conventional registered or unregistered trade mark rights such as brand names and logos. Notably, the finding of post-sale confusion in a passing off context will be a significant tool in a brand's back pocket when dealing with copycat and dupe products.