A claim for infringement of UK unregistered design right alleged to subsist in the design of a pair of cargo trousers has failed as the design was found not to be original. The design was known as the BKS-001 design and dated from April 2015.
The case was brought by KF Global Brands Limited against Lead Wear Limited and others, concerning three products sold by the latter. These were made to order by a company called S&S Swimwear in Bangladesh.
Following a two-day hearing at the IP Enterprise Court (IPEC), Recorder Douglas Campbell KC found that, apart from having a pen pocket instead of pen loops, the BKS-001 design as at April 2015 was a copy of an earlier pair of cargo trousers sold by Aldi. Therefore the design was not original. He added:
“Furthermore this difference is so minor that it does not create a new design right in the BKS-001 design as a whole, and the Claimant only relies on that design as a whole. The Claimant did not rely on any design right in the pen pocket itself ... It follows that the BKS-001 design as at April 2015, ie the only design relied upon, is not original, and the claim must fail.”
While it was possible that there was a second version of the BKS-001 design later on, this was not pleaded and the judge disregarded it.
BKS-001 design The earlier Aldi design
Primary and secondary infringement
In case his finding on subsistence of the unregistered design right was wrong, the judge also considered infringement.
He found there was no primary infringement. The claimant had wrongly compared the defendant’s products to its current commercial product rather than its claimed BKS-001 design.
Recorder Campbell found that the Defendant had copied text from an advertisement on eBay, but he said this was not relevant:
“It might be thought that once I have found that Mr Kader copied the text relating to the Claimant’s product, the Claimant must win on infringement of design right. This is wrong for two reasons. First, these are completely different legal and factual issues. Copyright is not even claimed in the relevant text. Secondly, the Claimant has already lost on the issue of originality. If and insofar as Mr Kader ever asked S&S Swimwear to copy a second version of the BKS-001 design (as to which I make no findings, but which was effectively the case put by the Claimant) then such is irrelevant.”
Moreover, the defendants’ products were made by S&S Swimwear in Bangladesh, and the only potential authorisation by the defendants related to Bangladesh.
On secondary infringement, the key question was whether there was a “reason to believe” the products were infringing following the letter before action. But the judge found that there was nothing about the price or nature of the goods to give the second defendant (who re-sold the defendant’s cargo trousers on eBay) reason to believe they were infringing.
As for the letter before action, it had “so little relevant detail” that it merely provided notice that a claim was being made. The claimant did not properly clarify the nature of its claim until after the case management conference. “Had it mattered, I would have held that the Second Defendant did not have reason to believe the goods were infringing before then. As it happens, the Second Defendant stopped selling the products complained of shortly after the case management conference in any event,” said the judge.
What does this mean?
Unregistered design rights are frequently relied on in the fashion industry, but as this case shows originality is always critical. In this dispute, the defendants successfully showed that the claimant’s cargo trousers were almost identical to those sold by Aldi, and moreover that the claimant had seen and copied them. This meant the infringement claim was dead in the water.
If you plan to rely on unregistered design right protection, it is essential to have a strong case on both subsistence and infringement before going to court. We can provide advice in unregistered design right cases, including on the chances of bringing a successful claim and drafting an effective letter before action.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com