How can you stop someone from systematically copying your brand?
What if the copying went further than just your designs and covered everything from your marketing strategy to your models?
This major new UK fashion case shows the consequences which range from the predictable (copying valid designs has consequences) to the surprising (it isn't necessarily possible to stop all copycat behaviour). This case is a bit of a marathon read but it's a fantastic primer for anyone wanting to understand how the fashion industry often works behind the scenes and the way that intellectual property law views these activities.
In this case, bodycon and bandage style dresses were in the spotlight. The House of CB and Mistress Rocks were some of the driving forces behind this trend in the UK... they were less than flattered by Oh Polly's imitation.
Unregistered designs - WIN
It is a little known fact that unregistered design cases have a near 100% success rate in the UK courts. Unregistered designs are a versatile right which last for 3 years (unregistered Community designs and the post Brexit equivalent) and 10 years from first marketing (UK unregistered design right). You can find out more here.
There are two key stages for any design right action to be successful: (1) proving that the design is valid and (2) proving that the design was infringed.
Each of the designs was attacked on the basis that it was not original (in the copyright sense), or produced the same overall impression as specific prior designs (for community designs). The judge noted that: “In most cases, the prior designs pleaded were very different indeed from [House of CB’s] designs, and the pleaded case of lack of originality (in the copyright sense) seemed to me to be hopeless."
There was a related attack on the basis that the designs were "commonplace". The judge was very critical of the earlier designs. As he put it "the garments submitted to show that the Claimants’ designs were commonplace were often very different indeed.”
Seven of the 20 garments infringed House of CB's designs. This was in large part due to witness testimony from the Defendant's co-owner and lead designer. Put simply, the judge concluded that, unless her statements could be verified by an independent third party, they were more likely than not to be false. He concluded that her design process was to “identify third party designs that she liked, and send images of them to the factory to be copied”.
He also found that House of CB and its sister business, Mistress Rocks, should be awarded additional damages due to the flagrant nature of the infringement and the fact that Oh Polly continued to copy House of CB even after the proceedings were launched.
Passing Off - LOSE
The passing off claim was cleverly constructed based on the particular circumstances of House of CB's business and the nature of the copying. It is notoriously hard to win a passing off case on get up alone. This is because very few tend to be deceived by the similar get up. Many may make an association but assume it is a copycat - this is not good enough to meet the second limb of the passing off trinity: misrepresentation.
House of CB recognised this and constructed a very clever argument that Oh Polly was passing itself off as a sister brand to House of CB - much like House of CB's actual sister brand (Mistress Rocks). House of CB noted that Oh Polly had copied almost everything about the House of CB business from the defendant’s business model and focus, garment design, locations, themes and styling of photoshoots, models, packaging, logos, and websites.
Taking everything into account, including the differences between the parties and evidence of confusion from social media, the judge found the claimants had proved goodwill but not misrepresentation and there was therefore no passing off. The absence of significant evidence of anyone actually being deceived into believing that Oh Polly was a sister brand was a significant consideration.
It is fair to say that the judge reached this conclusion extremely reluctantly, saying: “‘It does seem to me that the Defendants have been able to ride on the coat-tails of the Claimants’ successful business model, and rather than investing in their own development, or spend money and time trialling different models, styles, locations, packaging etc, they have obtained an advantage by copying a successful competitor. But, as Jacob LJ has set out so clearly in L’Oréal v Bellure, passing off is not a tort of unfair competition. Passing off requires a misrepresentation, and there is insufficient evidence before me to find that consumers do or will consider House of CB and Oh Polly to be sister brands. That was the Claimants’ case, and it has not been made out.” (Emphasis added].
What does this mean in practice?
The key takeaways are:
Unregistered designs are a fantastic right for the fashion industry and are more likely than not to prevail in court. In some instances House of CB might have met with more success if it had relied on parts of the garment as the design rather than the entire garment.
Trying to reverse engineer a design process after the event is unlikely to be a successful strategy for overcoming infringement.
Passing off remains an extremely challenging cause of action where the brand name is different.
Most designs will not be commonplace - beyond a standard pair of jeans or a plain white Tshirt, it is rare for designs to meet this criteria (even a slip dress was not commonplace despite being described as "utterly banal" by the Defendant).
Physically comparing the 20 garments said to infringe with the 20 garments relied on by House of CB was a key part of the judge's conclusions. If the prior art had been available as a physical product as well, the prospects of success might have been greater. Clearly, this is challenging to achieve in practice.
The trial was limited to 20 designs (as a representative sample of the 91 designs in issue). The judge concluded that this was FAR TOO MANY! Given the judgment is 122 pages, it is hard to disagree. In the future, the judge would limit the parties to three designs in total. This would save a lot of time and, it was hoped, enable the parties to reach a resolution with regard to the infringing nature of the remaining garments without further judicial involvement.
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