A recent decision of the UK High Court has shown that UK Design Right remains a useful weapon for fashion brands, and that it can often come to the rescue where its more popular cousin, Community Unregistered Design Right, is found wanting. The ruling relates to a claim brought by the well-known jean brand, G-Star Raw.
G-Star Raw successfully sued a group of defendants (collectively referred to as 'Rhodi') for copying the unusual style of one of its designs for jeans, called the 'Arc Pant'. The cut of the Arc Pant made the denim twist around the leg, creating a “corkscrew” effect, as illustrated below:
As the Arc Pant was more than three years old, any Community Unregistered Design Right (which protects the whole appearance of the jeans, including both 3D and 2D elements) had expired. UK Design Right, an unregistered right which is specific to the UK, is far less commonly relied upon by fashion brands than Community Unregistered Design Right, because it only protects the 3D elements of a product – that is, its shape. It does not protect the colour, pattern or other surface decoration of products.
However, UK Design Right does have two advantages. Firstly, and crucial in the case of the Arc Pant, it lasts for 15 (as opposed to three) years. Secondly, it can protect any part (not just the whole) of a product. A claimant can therefore pick which part or parts of its product are particularly unique, and assert UK Design Right in just that part or those parts. In the case of the Arc Pant, that was the way that the cut of the jeans curved around the leg to create the corkscrew effect. However, it could equally apply to any part of a product – for example, the heel of a pair of shoes, the collar of a shirt, the zip on a coat or the strap on a handbag.
The judge made it clear that, because G-Star Raw had identified the particular parts of the Arc Pant that it claimed to be protected (and had been copied by Rhodi), it was irrelevant that other parts of the jeans may not have been sufficiently unique to qualify for UK Design Right. In contrast, if a claimant argues that the entirety of its product is protected by UK Design Right, but it in fact turns out that several elements of the product are commonplace, the claimant may end up with no protection.
This ability to pick and choose the elements in which protection is claimed is a key difference between the two types of unregistered design right protection available in the UK. If you feel that one particular part of your design, however small, has been copied, UK Design Right may be the right for you.
The other key point to come out of this case is the importance of keeping a detailed record of how you came up with your design. The judge was impressed by the design history that G-Star Raw could adduce for its Arc Pant. Rhodi, in contrast, could not point to a logical design process resulting in its design. Other defendants to recent design right infringement cases have been able, by producing evidence of an independent design history, to rebut the inference that they copied claimants’ designs – despite strong similarities between their and the claimants’ designs.
Please contact Peter Nunn for more information.