28 February 2015

Unregistered Design Rights: G-Star Raw v Rhodi

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In G-Star Raw CV v Rhodi Ltd and Others [2015] EWHC 216 (Ch) (6 Feb 2015) G-Star Raw sued Rhodi Ltd and five other companies and two directors of those companies for infringing its design rights in the designs of two ranges of jeans by importing into, and distributing in, the UK jeans that the defendants knew to be infringing articles. The defendants challenged the subsistence of design right. They denied copying and any knowledge of the alleged infringements. They counterclaimed for declarations of non-infringement and the recovery of moneys that had been paid to G-Star under a bank guarantee. The two directors also denied any personal liability for any wrongdoing by their companies

The claim and counterclaim came on before Mr Richard Spearman QC sitting as a judge of the High Court. Mr Spearmam gave judgment to the claimant against the first, second, fourth and fifth corporate defendants but dismissed the claims against the third and sixth defendant companies. He also dismissed the claim against the directors and the defendants' counterclaim against the claimant.

On the subsistence of design rights the deputy judge adopted the judgment of Mr Justice Lewison in  Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Another (2009) 32(4) IPD 32031, [2009] ECDR 11, [2009] EWHC 26 (Pat) between paragraphs [27] and [38] of his judgment. The claimant called the designer of its jeans to give evidence of the process by which she had created them. Mr Spearman concluded at paragraph [60] that:
"This account was clear, compelling and supported by both contemporary documents, including original pattern pieces which were produced for inspection in court, and the statement of Mr Morisset. On the basis of this evidence, and having regard to other undisputed facts which mean that the criteria contained in section 213(5) of the CDPA are satisfied in the present case, in my judgment it is plain that unregistered design rights subsist in the Arc Pant Designs (see section 213) and that G-Star is the owner of those rights (see section 215)."
The deputy judge also found that garments made to those designs were first made available in 2008.

Although Mr Spearman acknowledged at paragraph [88] that it was clear from s.226 (2) of the Copyright Designs and Patents Act 1988 in that design right is infringed by making articles exactly or substantially to a design rather than copying the whole or substantial part of the original he looked for objective similarities and an opportunity to copy and then sought an explanation from the defendants for those similarities. The similarities that he found between the defendants' jeans and the claimant's was "striking".  In his view the defendants had not provided a satisfactory explanation of how the Rhodi Styles were produced, or come anywhere near rebutting the inference that they were produced by copying the claimant's designs. In the deputy judge's judgment, the similarities between the Arc Pant and the Rhodi Styles arose from copying.

As the defendants' jeans had been manufactured overseas G-Star Ray had to prove that the defendants knew or had reason to believe that those jeans were infringing articles for the purpose of s.227 (1) (a), S.228 (3)  included in the definition of "infringing article" an article that has been or is proposed to be imported into the United Kingdom, and its making to that design in the United Kingdom would have been an infringement of design right in the design or a breach of an exclusive licence agreement relating to the design. Mr Spearman found evidence that the first, second, fourth and fifth defendants had the requisite knowledge but not the other defendants.

This case was decided largely on its own facts and followed well established authority. It did not establish any new principles or otherwise change the law. It is nevertheless worth reading for its analysis of the legislation and review of the case law. Should anyone wish to discuss this article or design right law generally he or she should call me on 020 7404 5252 during normal office hours or use my contact form.

Further Reading

2 March 2015  Jean Wars - Lessons from G-Star Raw v Rhodi   IP North West

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