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Design right infringement in gilets

Print publication

03/02/2015

In DKH Retail Ltd v H Young (Operations) Ltd [1] the Intellectual Property Enterprise Court (the IPEC) had to determine whether an Animal branded hooded gilet infringed Superdry’s unregistered design right. Animal admitted that it had imported and sold the gilets.

Superdry claimed both UK and Community unregistered design right protection. Animal argued that the Superdry design was commonplace (in respect of the UK unregistered design) and lacked individual character (in respect of the Community unregistered design). The judge rejected this, finding that the Superdry design had sufficient visual impact. The judge also rejected arguments based on the “must fit” and “must match” exceptions.

Animal also challenged Superdry’s title to one of the designs, arguing that Article 27 of the Community Designs Regulation [2] only operated to permit the assignment of existing design right, not future rights. The assignment in question was executed before the design’s creation and therefore covered prospective rights. The judge dismissed this argument as well, noting that section 223 of the Copyright, Designs and Patents Act 1998 permits the assignment of prospective design rights.

On infringement, the judge found that the relevant parts of the Animal gilet were made substantially to the Superdry design. The similarities between the designs significantly outweighed the differences and the overall reaction of the informed user faced with the competing designs would be that they shared the same design concept. Animal’s design would not produce on the informed user a different overall impression to that produced by the first design.

As Animal had been selling and importing the gilets since July 2012, Superdry’s claim for infringement of its UK unregistered design was based on secondary infringement and, as such, required knowledge on the part of Animal. (There is no such requirement for knowledge under Community design right law.) Superdry had given Animal notice of its rights before the infringing action, so it satisfied this requirement to show knowledge on the part of Animal as a secondary infringer. Superdry also argued that it was well known in the clothing industry that intellectual property rights are likely to subsist in clothing items and that Animal’s knowledge could therefore be inferred. The judge did not express a concluded view on this.

The case is a fairly standard design infringement case although the confirmation of the applicability of section 223 to prospective design rights is noteworthy. As a footnote to the case, the usefulness of the IPEC as a venue for determining disputes concerning the design right in clothing should be mentioned. The speed of change in the fashion industry may mean that prospective claimants have felt that it is not worth going to the trouble and cost of issuing infringement proceedings; with the comparative speed and low cost of proceedings in the IPEC, they should no longer be deterred from instituting proceedings for design right infringement.

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[1] [2014] EWHC 4034
[2] Regulation 6/2002

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