Catwalk to courtroom – designer unsuccessful in design right claim against Boohoo

Tom Griffin, Solicitor

There has been much coverage, both in the legal and mainstream press, of Ms Edwards’ David and Goliath-esque claim for UK unregistered design right (UDR) infringement against Boohoo and four other fashion companies. Unfortunately for those wishing to see a victory for the underdog against the fast-fashion behemoths, the Intellectual Property Enterprise Court recently dismissed Ms Edwards’ claim in its entirety.

Ms Edwards claimed that she possessed UDR in the shape and configuration of five items of clothing and, further, that the Defendants had copied these designs without her permission.

UDR protects the design of the shape or configuration of the whole or part of an article (such as an item of clothing) and, significantly (and in contrast to registered design right), does not protect surface decoration. If established, UDR would give Ms Edwards the right to prevent others from copying the design so as to produce articles exactly or substantially to that design without her permission.

The Judge held that, whilst UDR subsists in all but one of the designs, the Defendants did not copy any or all of Ms Edwards’ five designs and, therefore, Ms Edwards’ claim be dismissed in its entirety. Central to the Judge’s reasoning in reaching this decision was that:

1. When considering UDR, any aspects of a design which are materially influenced by the shape of the individual wearing it should be discounted. Resultingly, Ms Edwards was, for example, in relation to the design of a skirt, unable to rely on the “high waistline” as forming part of the design.
2. Ms Edwards defined her designs by reference to contemporaneous pictures of articles made to the designs and, resultingly, the designs are much more generally defined than if defined by reference to design documents (as is conventional in UDR infringement proceedings). Consequently, establishing copying was more difficult because, amongst other things, Ms Edwards was unable to point to tell-tale indications of copying (such as, for example, repetition of precise dimensions).
3. The passage of time since the publication of Ms Edwards’ designs, the modest reach (at the relevant time) of her social media accounts and, the low originality of her designs all mitigate against a finding of copying (and, conversely, in favour of someone coincidentally creating a similar design).

As the Judge acknowledged in his concluding remarks, copying undoubtedly occurs within the fast-fashion industry. However, this decision highlights the difficulties that a claimant will face when seeking to establish that copying has taken place as a result of defining their design by reference to a generalised description. This is especially so in the fashion industry given the limited design freedom one has when seeking to design items of clothing to fit the human body.

If you have any queries relating to unregistered design right subsistence or infringement, please contact a member of our intellectual property department on 0161 832 3434.