Copycat Fashion: an important decision for the fashion industry - Kuits Solicitors Manchester
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Copycat Fashion: an important decision for the fashion industry

Copycat Fashion: an important decision for the fashion industry

7th January 2021 - Published by Kuits Intellectual Property team

A judgment has recently been handed down in the Intellectual Property Enterprise Court (IPEC) in the case of ‘Freddy SPA v Hugz Clothing Limited [2020] EWHC 3032′ in what could prove to be an important decision for the fashion industry, giving brand owners more options in pursuing copycat infringers.

The case

The Claimant in the case, Freddy SPA is the manufacturer and distributor of “bum-enhancing jeans” which give the wearer the appearance of “slimmer hips, whilst simultaneously lifting and separating the buttocks”.  The Claimant became aware that Hugz were selling a copycat version of their jeans. Initially a settlement agreement was reached, with Hugz agreeing to stop selling the jeans, but the company then released a second version of the jeans, which prompted Freddy to issue proceedings for infringement of UK unregistered design right, patent infringement, passing off and breach of the settlement agreement.

The Claimant’s case in patent infringement and UK unregistered design right infringement succeeded with the exception that the Court determined that the shape of the jeans when worn is not a valid design and cannot be used for enforcement, because the shape when worn will depend on the person wearing the jeans. However, it was the Court’s decision in respect of the claim for passing off that is particularly important, as it’s the first UK decision to find post-sale passing off.

What is passing off?

There are three basic elements to passing off:

  1. the claimant must have goodwill;
  2. there must be a misrepresentation that the defendant’s goods are those of the claimant; and
  3. damage.

How was it linked to this case?

The Claimant argued passing off in two respects; that the Defendant wanted consumers to think that the brands were connected, and in the alternative, even where the consumer knows the brands are not connected, because they are sold under a different brand name, they want other consumers to believe, when they see the product, that it is connected with the Claimant’s product.

The Court found that the “get-up” of the Freddy jeans, which was a combination of its brand elements, the polished metal badge, the positioning of the badge, the positioning and shape of the seams, was infringed and that by copying the Claimant’s “get-up”, the Defendant had intended to misrepresent that it was in some way connected to the Claimant.

However, in addition the Judge found that there was post-sale passing off; that consumers can be deceived as to the origin of the goods after purchase. This is when a consumer knows they are buying copycat products but do so because they want other consumers to believe the products are associated with the Claimant. The Judge found that the jeans continue to make misrepresentations to consumers whenever they are worn and that misrepresentation damages the Claimant, therefore there was passing off post-sale.

This is an interesting development in passing off and could be a huge victory for fashion brands in the fight against copycat products even when these products are sold under a different brand name.

Get in touch with an intellectual property solicitor in Manchester

If you would like advice in respect of the IP rights of your company, please contact IP solicitor Helen Harmel on 0161 838 7816 or email helenharmel@kuits.com

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