High Court Finds Unregistered Design Right infringement of House of CB Designs Against Oh Polly Online Fashion Retailer

High Court Finds Unregistered Design Right infringement of House of CB Designs Against Oh Polly Online Fashion Retailer

Kylie Jenner, Beyonce, Jennifer Lopez and Khloe Kardashian in House of CB | Image source via getty images

The important High Court judgement for the fashion industry on unregistered design rights, Original Beauty v G4K, takes a closer look at when using someone else’s garment when designing your own stops being a source of inspiration and becomes an act of outright copying. The case concerns “Bodycon” and “bandage” garments, the garment style made famous in recent years by celebrities such as the Kardashians, Jennifer Lopez and Beyoncé.

Original Beauty brought an action for infringement of their unregistered design rights under UK and EU law and that the defendants had passed their brand “Oh Polly” off as a sister brand to the claimants “House of CB” founded by British Conna Walker in 2010. In their defence the defendants said the House of CB designs lacked originality, referencing for example earlier garments designed by Cushnie et Ochs, Jacquemus , Margiela and Marc Jacobs to suggest that the claimants’ designs created the same overall impression and were common place. Where accused of copying images of the claimants’ garments in their design process the defendants argued that they had only been used for inspiration rather than directly copied.

Infringement

Looking at the design infringement claim, David Stone, sitting as Deputy High Court Judge, compared 20 House of CB designs against 20 Oh Polly designs.

For each design the judge first established when the claimants had created their design and the design process that led to the design. It is worth noting that none of the defendants’ designs were created before any of the claimants’ designs (save for a few cases in which they had in any event been modified following the launch of the claimants’ design). As to the defendants’ design process in general, the judge highlighted in his judgment that, Ms Henderson, the CEO of Oh Polly who designed many of the defendants’ garments, was not a designer and could in fact “not draw”. Rather the design process involved Ms Henderson designing garments in her head using for inspiration “digital mood boards” (essentially electronic folders of photos of third-party garments found on the internet).

Having considered the chain of events and the design processes the judge then moved on to consider whether the claimants’ UK unregistered design right (UKUDR) and Community unregistered design right (CUDR) were valid. Following which he then considered if the defendants’ design infringed any of these rights.

The judge found that the UKUDRs for all the claimants’ designs were all valid as none of them lacked originality or were commonplace over prior designs pleaded in the defence. The judge also found the CUDRs in all the claimants’ designs to be valid, finding that none of them produced the same overall impression as the prior designs.

When considering whether a design infringed the UKUDR the judge had to establish whether it had been made exactly or substantially to the claimants’ design. For several of the defendants’ designs, screenshots of the claimants’ design had been used as the source, sometimes the only source, of inspiration in the design process. This, combined with the timing of the creation of the two designs, led the judge to find that 7 of the defendants’ designs had been made substantially, if not exactly, to the claimants’ designs and so infringed the claimants’ UKUDR in those designs.

Given that 7 of the defendants’ designs were found to have been made substantially to the claimants’ designs it is not surprising that the judge did not find any of these designs to produce a different overall impression from the claimant’s design, thereby also finding them to infringe the CUDR in those designs (although for one only one colour way was found to infringe the CUDR). Even though some of the defendants’ designs had differences from the claimants’ designs such as lacking a buckle, these were perceived as too subtle to cause an overall different impression. It is perhaps not surprising that the judge found these differences to be too insubstantial to create a different overall impression in designs where he had already established there was infringement of the UKUDR.

Further considerations of infringement

In the second hearing, the judge considered additional colourways of five further garments. At the first form of order hearing, the judge had given orders for dealing with the remaining 71 garments out of the 91 garments pleaded (20 garments had already been decided on in the main judgement). However, following that hearing the defendants raised “some perceived lacunae” in the main judgment, arguing that, even though different colourways had been dealt with for garments D4, D61 and D91, different colourways had not been dealt with in relation to D2, D12, D13 and D35.

See example: from left to right D2, D12, D13 and D35.

At the second hearing ([2021] EWHC 953, the claimants’ submitted that additional findings are not necessary which the judge agreed with on the basis that his findings in relation to UKUDR already prevented sales of all colourways of D2, D12, D13 and D35 in the UK as UKUDR is not reliant on colour, and no pan-European relief was being sought. But as there was still a dispute over the 71 remaining garments, which the claimants and defendants were currently trying to resolve by consent, and the judge maintained a further trial on these 71 would be disproportionate, the judge decided to consider the different colourways for D2, D12, D13 and D35.

For D2, D12 and D35 the judge found that the different colourways, although still infringing the claimants’ UKUDRs, did not infringe the claimants’ CUDRs as the different colourway created a different overall impression.

For D13 the different colourway was mocha. The colourway of C13, which D13 was being compared against, was black. The judge held that the colours were similar and, combined with the other striking aspects of the shapes of the garments, the small difference in shade would not be enough to create a different overall impression. Therefore, D13 was found to infringe both the UKUDR and CUDR of C13.

Passing off

In relation to the passing off claim, the judge found that the defendants’ Oh Polly brand had obtained and copied the claimants’ business model, social media marketing etc. and had gained an advantage from of the success of the House of CB brand. However, the claim that the defendants had passed off their Oh Polly brand as a sister brand of House of CB failed because the claimants failed to prove deception. Although customers had noticed similarities between the brands, none had been deceived. This was shown by comments such as "Oh Polly fully copying House of CB designs" and "Oh Polly wanna be House of CB so bad" on social media.

Overall the judge’s findings are not surprising. He was unimpressed by the defendants’ design evidence and commented that “there was an attitude of “couldn’t care less” about the rights of others”. Accordingly, he held that “the circumstances of the case … [were] sufficient to warrant an award of additional damages in relation to [the 7] designs”.

Costs

The  judge also addressed costs of the trial in a further judgment ([2021] EWHC 953) where he considered CPR 36.17.  He held that although liability had been determined in the Claimants’ favour, the only course open to him was to reserve costs until after the trial of quantum.  The defendants had made a Part 36 offer and it would not be known until then whether that had been beaten. 

It is unclear what the defendants gain from the findings that D2, D12 and D35 do not infringe the claimants CUDRs when they are still found to infringe the UKUDRs and no pan-European relief is being sought. Maybe they were looking to strengthen their hand in their negotiations with the claimants about the remaining 71 garments or in relation to costs of the action. In any event, it feels just that defendants, found to have carried out blatant copying of some designs, should not be granted a declaration of non-infringement on the others.

Written by Hannah Elam, Associate at EIP.