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UK Unregistered Design Rights: an important case for the fashion industry

16 Mar 2015

G-Star Raw Cv -v- Rhodi Limited and Others [2015] EWHC 216 (Ch)

The High Court has recently decided the outcome of a dispute concerning the alleged infringement of unregistered UK design rights, relating to G-Star Raw jeans, by a group of UK companies, the Rhodi Group.

The decision on this case case is a welcome and up-to-date authority on UK unregistered design rights in the fashion industry, particularly as the facts of this case meant that it was necessary for the Judge to consider all of the issues that might fall to be considered in this type of case.

G –Star’s ARC Jeans
The case centred around G-Star’s “ARC” range of jeans, which can be described as having an irregular fit. Their design includes several shaped pieces of material sewn together to create a 3D effect. In other words, the jeans are not made from the conventional two pieces of symmetrical material that can lie flat on top of each other. The ARC jeans are  designed to replicate the natural lines of the leg and incorporate a twisted, corkscrew-like design to the leg. The result is that the leg of the jeans does not hang straight; instead it bends at the knee.

Rhodi Group’s Voi Jeans
The Rhodi Group created a range of jeans called “Voi”, which closely mirrored the design of G-Star’s Arc jeans. The Rhodi Group was no stranger to controversy having previously settled a case with G-Star regarding past alleged infringement of designs for the same range of jeans. As part of the settlement of those earlier proceedings, the Rhodi Group provided a bank guarantee to G-Star, which G-Star could call upon if they could provide evidence of any subsequent infringement.

As a result of the most recent infringement G-Star called upon that bank guarantee and, in the current proceedings, sought an injunction, orders for delivery up, an enquiry into damages or account for profits and other remedies from Rhodi Group.

As discovered from its internal correspondence, which was disclosed during the proceedings, the Rhodi Group’s established practice was to copy market trends and this sometimes resulted in them ‘stepping over the line’ of IP infringement.

Almost the whole gamut of issues required to succeed in a case of UK unregistered design rights fell to be considered in this case. That is:

  • whether unregistered design rights subsist in the ARC jeans designs;
  • when the jeans were first available for sale, and therefore when the 10 year protection provided by UK design rights started to run and whether a licence of right was available;
  • whether the Voi jeans were made to the design of the ARC jeans and, if so, whether or not they were copied or designed independently;
  • whether all of the 8 Defendants were liable for secondary infringement and therefore whether each of them knew or had reason to believe that the Voi jeans were infringing products; and
  • whether the 2 individual defendants were liable as joint tortfeasors.

In examining whether design rights subsisted in G-Star's ARC designs the Judge noted that G-Star's witnesses were reliable and helpful. G-Star's design process for the ARC jeans was clearly and comprehensively explained to the court by the head designer of the ARC designs. Also the evidence from the expert witnesses led the Judge to conclude that designs similar to those for the ARC jeans were not commonplace. A reminder was given that designs do not need to be novel to attract design rights and that it takes more than a handful of similar pre-existing designs to show that a design is common place. The Judge therefore had little difficulty in deciding that design rights did subsist in the ARC jeans designs, and G-Star succeeded in establishing that these jeans were first available for sale in 2008. Hence G-Star’s design right protection is extant.

In considering whether Rhodi Group had copied the ARC designs, the Judge preferred the expert evidence of G-Star's expert who considered that the designs were so similar that it was almost impossible for Rhodi Group to have come up with the design's independently. In the circumstances a rebuttable presumption arose that Rhodi Group had copied the ARC designs. It was therefore up to the Rhodi Group to prove that they had not copied, which they failed to do. There were stark gaps in their witness evidence, which was found to be patchy and undependable in places. By way of example, neither of the two designers responsible for designing the Voi jeans gave evidence during the trial and the lead designer's email account was deleted by the Rhodi Group's IT department during the course of the proceedings. The designer who did give evidence, had not been directly involved in the design of the ARC jeans.

Accordingly, Rhodi Group's efforts to rebut the presumption of copying were far from sufficient.

It then fell to the Judge to consider whether each of the defendants were liable for secondary infringement. A crucial requirement for this is determining whether or not each defendant knew or had reason to be believe that the Voi jeans were infringing products. As the Rhodi Group had been involved in previous litigation with G-Star involving the same product range and as it emerged in the trial that there were express warnings within the Rhodi Group to avoid copying the ARC designs, the Judge found that each of the company defendants which were involved in acts of secondary infringement, had the requisite knowledge.

The actions of the two individual defendants did not amount to procuring infringement of G-Star's Design rights. So they were not liable. Whilst their characters were called into question, each of them having previously been convicted of perverting the course of justice and disqualified as directors, their actions amounted to no more than fulfilling the constitutional role of a director or shareholder within a company. That is insufficient to attract liability as a joint tortfeasor. Crucially they had not procured the acts of infringement included in the case.

In a world in which the copying of fashion designs is rife, this judgment gives clear and useful guidance to designers seeking to protect their designs. For example the full and clear preservation of the designer’s design process for each of its designs is crucial in proving the subsistence and ownership of design rights. G-Star had very strong evidence in this respect. Rhodi Group’s evidence was woefully lacking.

For more information on unregistered design rights and how your business can exploit these rights please contact Robert Ganpatsingh.

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