Jeans - Freddy SpA v Hugz Clothing Ltd

            

Jane Lambert

Intellectual Property Enterprise Court (David Stone)  Freddy SpA v Hugz Clothing Ltd and others [2020] EWHC 3032 (IPEC) (19 Nov 2020)

This was an action for breach of a settlement agreement, patent and unregistered design right infringement and passing off. There was also a counterclaim from the defendants for revocation of the patent and unjustified threats.  The defendants instructed specialist solicitors and counsel to defend the claim until 5 June 2020. On that day the solicitors came off the record and the defendants took no further steps in the proceedings. The action and counterclaim came on for trial before Mr David Stone sitting as a deputy judge of the High Court on 5 Oct 2020.  By his judgment of 19 Nov 2020, Mr Stone struck out the counterclaim under CPR 39.3 (1) (c) and gave judgment to the claimant on the claim (see Freddy SpA v Hugz Clothing Ltd and others [2020] EWHC 3032 (IPEC) (19 Nov 2020)).

The Parties

The claimant is an Italian public company called Freddy SpA. It supplies a range of patented body enhancing jeans for women.  The patent has been granted to the company by the European Patent Office for Pants, in particular for shaping the female buttocks and hips under publication number EP2666377B1. The first and second defendants are private limited companies that are managed by the third.  They have produced their own body enhancing jeans which they sell as "HUGZ".

The Settlement Agreement

The claimant complained that the defendants' HUGZ jeans infringed its patent and threatened legal action.  The parties negotiated a written agreement to settle their dispute dated 3 April 2019.  The defendants launched another set of HUGZ jeans. The claimant's solicitors purchased a pair on 2 May 2019. Believing that the new jeans also infringed its patent, the claimant launched this action on 12 July 2019.

The Patent

In their defence, the defendants admitted that their original jeans had infringed the patent. That was why they entered the settlement agreement. However, they contended that their new range did not infringe. They also alleged that the patent was invalid for want of novelty and inventive step.  The claims alleged to have been infringed in the particulars of claim were 1, 2 and 5. At trial, the deputy judge was asked only to consider claim 1.  The prior art pleaded by the defendants for anticipation was US patent application US20040111781 for Clothing ("Miyake") and PCT application WO2008/063259 for a Circularly knit undergarment having knit-in support panels and derriere cup fullness ("Kennedy"). The defendants also relied on those citations for obviousness.  In addition, the defendants alleged that the patent in suit was obvious over US patent application US3,996,622 for Form-fitting trousers ("Cooke") and  US patent application US2007/0199134 for Hosiery garment and method of making the same ("Duckman"). 

The Law

Mr Stone said that the law on novelty, obviousness, and infringement was well established and well known. He did not need to set it out in his judgment other than some brief comments in relation to the doctrine of equivalents.  Readers who are not familiar with patent law should know that patents are granted for inventions that are new and involve an inventive step (s.1 (1) of the Patents Act 1977).  

Inventions are new if they do not form part of the state of the art as defined by s.2 (2) and (3) of the Acr.  A rough and ready test for lack of novelty is whether the patent in suit would have been infringed by anything that was previously known or used. 

An invention involves an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art (s.3 of the Patents Act 1977). The Court of Appeal has developed the following methodology for determining whether an invention involves an inventive step known as the Windsurfing/Pozzoli test:

"i) (a) Identify the notional 'person skilled in the art';
(b) Identify the relevant common general knowledge of that person;
ii) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it;
iii) Identify what, if any, differences exist between the matter cited as forming part of the state of the art and the inventive concept of the claim, or the claim as construed;
iv) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

Readers should also know that s.125 of the Patents Act 1977 provides that:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

In that context, they should know that s.14 (2) (b) of the Act requires every patent application to include "a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim" and that this specification must "disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art" (s.14 (3)). When considering whether a claim of a patent has been infringed the judge will read the patent in the way that it would have been read by such a skilled addressee.

The Skilled Addressee

The first step of the Windsurfing/Pozzoli test is to identify the person or persons skilled in the art.  In the absence of evidence from the defendants, the deputy judge accepted the claimant's evidence that they would be "A team working on the development and manufacture of designs for underwear, led by a designer and including experts in fabrics technology and manufacturing processes."

Common General Knowledge

The deputy judge's next step was to identify the team's common general knowledge.  Again, he relied upon the claimant's expert that it included knowledge of the following matters:

"i) knitted stretch cotton jersey leggings that have the appearance of jeans, known as "jeggings";
ii) skinny, stretch jeans whose composition includes elastane yarn;
iii) smoothing, flattening and shaping underwear garments;
iv) how to work out how pattern pieces should be fitted together;
v) the operation and purpose of the various machines used in textile manufacture;
vi) fabrics with different elastic modulus, including woven fabrics and warp knitted fabrics;
vii) the use of lining mesh and laminates to provide stiffening, and elastics of silicon to prevent slippage;
viii) the use of three-dimensional design for the purpose of circular knitting machines;
ix) the use of layers and different stitch types to create shape and support;
x) the use of different yarns to achieve weight and finish;
xi) the relationship between fabric choice and "drape";
xii) methods for bonding or laminating silicon or polyurethane linings and films; and
xiii) the behaviour of stretch fabrics, including the requirements to rest fabric after cutting, and the particular sewing requirements for such fabrics."

Invalidity

The claimant's expert had produced a report setting out the technical contribution of each of the prior art citations.  

As for novelty, Miyake did not disclose pants in the sense of outerwear.  its invention could be made on a type of fabric manufacturing machine called a "warp knit jacquard machine" with the whole of the rear of the garment in a single piece. Miyake provided for a single seam joining the girdle from waist to hem. There was no adaptation for positioning a seam in the intergluteal cleft. Kennedy was a seamless underwear garment made on a circular knitting machine, with integral support panels to flatten or compress the stomach, hips and upper thighs.  It was also an undergarment, rather than outerwear as claimed in the patent. It was knitted in one piece, not in separate parts or elements. There was no central seam or indeed any seam in the intergluteal cleft.  Mr Stone had no hesitation in finding that the want of novelty argument failed.

The expert also set out the steps she would expect the skilled team to tale in the light of the common general knowledge to arrive at the patented invention and none of them came close to falling within the scope of claim 1 of the patent.   The learned deputy judge had no hesitation in finding that the invention was not obvious. The patent was therefore valid.

Infringement

It was common ground that the first range of HUGZ jeans infringed the patent.  The expert found that the designers had made the following changes to design their way around the patent:

"i) on the First HUGZ Jeans, the curved seam along the base of the pockets continued towards and met at roughly a right angle with the seam positioned in the intergluteal cleft, in effect joining the piece of fabric labelled 1 to the piece of fabric labelled 2.
ii) on the Second HUGZ Jeans, there was no such seam, because a single piece of fabric made up the areas labelled both 1 and 2."

The question for the deputy judge to decide was:

"[w]hether the first and second element of the claim must be made from entirely separate pieces of fabric, or whether they can instead be substantially distinct pieces, that remain joined by a small bridge of fabric to each other."

At paragraph [61] Mr Stone said that it did not seem to make sense to construe "element" as meaning "totally separate piece of material". The expert thought that the skilled team would consider the portions labelled 1 and 2 in claim 1 to be separate "elements", even with the interconnecting bridge of fabric between the larger first and second elements.  The deputy judge agreed that would be a normal construction of the claim based on an interpretation of the words of the claim in the context of the specification as a whole.  He, therefore, held that the patent had been infringed on a normal construction of claim 1.

Mr Stone was also asked to consider the doctrine of equivalents as set out by the Supreme Court in Eli Lilly v Actavis UK Ltd and others  [2017] UKSC 48, [2017] Bus LR 1731, [2017] RPC 21 and the Court of Appeal in Icescape Ltd v Ice-World Intentional BV and others [2018] EWCA Civ 2219.  He quoted paragraphs [66] and [67] of Lord Kitchin's judgment in Icescape:

"[66] The whole approach to interpretation and scope of protection therefore involves the following steps, considered through the eyes of the notional addressee:
i) Does the variant infringe any of the claims as a matter of normal interpretation?
ii) If not, does the variant nevertheless infringe because it varies from the invention in a way or ways which is or are immaterial? This is to be determined by asking these three questions:
a) Notwithstanding that it is not within the literal (that is to say, I interpolate, normal) meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
b) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
c) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
[67] Of course, in order to establish infringement in a case where there is no infringement as a matter of normal interpretation, a patentee would have to establish that the answer to questions (a) and (b) above is 'yes' and that the answer to question (c) is 'no'
.

The expert said that the Second HUGZ Jeans achieve the same result in the same way as the patent, that that would be obvious to the skilled team and the skilled reader would not have expected there to be strict compliance with the language of the claim.  The deputy judge accepted the expert's evidence and held that the patent would have been infringed under the doctrine of equivalents if it was not infringed on a normal grammatical construction of the claim.

Passing off

At [67] Mr Stone said:

"To succeed in its claim, the Claimant must prove goodwill, a misrepresentation by the Defendants, and damage by reason of the erroneous belief engendered by the Defendants' misrepresentation."

The claimant asserted goodwill in the combination of following elements of its jeans (referred to in the pleadings as the "Freddy Get-Up"):

i) "a polished metallic badge approximately 15mm high and 15mm wide;
ii) which badge is, save for a narrow border, painted in a pale gloss colour;
iii) which badge features an abstract motif;
iv) which badge is positioned very close to the upper seam of the rear right pocket of the jeans;
v) which badge is positioned close to the outer seam of the rear right pocket of the jeans;
vi) two rear pockets each having two curved seams and one substantially straight seam;
vii) at least one central rear belt loop sewn at an angle to the vertical of approximately 40 degrees; and
viii) a scalloped rear yoke".

It complained that the defendants' jeans also had the following features:

i) "A polished metallic badge of approximately 15mm high and 15mm wide;
ii) Which badge is save for a narrow border, painted in a pale gloss colour;
iii) Which badge features an abstract heart-shaped motif;
iv) Which badge is positioned very close to the upper seam of the rear right pocket of the jeans;
v) Which badge is positioned close to the outer seam of the rear right pocket of the jeans;
vi) Two rear pockets each having two curved seams and one substantially straight seam;
vii) At least one central rear belt loop sewn at an angle to the vertical of approximately 40 degrees; and
viii) A scalloped rear yoke".

The claimant's expert said that the claimant's branding was distinctive and that the defendants had adopted the same features in order to associate themselves with the claimant.  The deputy judge agreed at [79]:

"The Defendants have clearly adopted very similar branding elements, which, as [the claimant's expert] Ms Rogan says, consumers will recognise as an indication of origin. That is clearly the Defendants' intention – as Ms Rogan says, the Defendants promote the Second HUGZ Jeans (particularly with on-line sales) by reference to HUGZ Get-Up, which is very similar to the Freddy Get-Up. Whilst there are minor differences (differences in the image on the metallic badge, only one diagonal belt-loop), these are insufficient to dispel the misrepresentation caused by the other elements. I also note that it does not matter that the trade mark under which the Second HUGZ Jeans are sold is different. The rear branding elements which comprise the HUGZ Get-Up are sufficiently strong that that is what consumers recognise: see the speech of Lord Oliver at page 411 in Jif Lemon. In my judgment, the Second HUGZ Jeans misrepresent, through the HUGZ Get-Up, that there is a connection in the course of trade with the Claimant."

That was sufficient for a finding of passing off in the usual sense but the claimant relied on a second type of misrepresentation whereby a consumer knows she is purchasing a knock-off when she buys the HUGZ Jeans, but she does so because she wants other consumers to believe that her jeans are associated with the claimant and its products.  In support of that contention, the claimant relied on the trade mark case Datacard Corporation v Eagle Technologies Ltd, [2011] RPC 17, [2012] Bus LR 160, [2011] EWHC 244 (Pat). At paragraph [288] and [289] of his judgment, Mr Justice Arnold said:

"[288] Finally, as a matter of principle, I find it difficult to see why it should matter if confusion only arises after the goods have been sold. Suppose that a consumer orders goods from a third party's website and, at the time of ordering, is not confused as the trade origin of the goods; but when the goods arrive some days later, the goods are labelled in a manner which wrongly leads the consumer to believe that the goods emanate from the trade mark proprietor. Why should such confusion not be actionable? It falls within the scope of a contextual assessment of the use of the sign. It is surely capable of being damaging to the trade mark proprietor. For example, it may cause the consumer to obtain the goods from the same website the next time he or she orders those goods under the same mistaken belief. And why should it make any difference for these purposes whether the goods are labelled with a sign identical to the trade mark or merely one that is similar to the trade mark i.e. whether the case falls within Article 5 (1) (a) or 5 (1) (b)?
[289] Accordingly, I conclude that in appropriate circumstances post-sale confusion can be relied upon as demonstrating the existence of a likelihood of confusion under Article 5 (1) (b)."

The claimant argued that the same principle could apply to passing off and found support in the New Zealand case Levi Strauss and Co and Anor v Kimbyr Investments Limited  [1994] FSR 335. Mr Stone found for the claimant on this ground too.

Unregistered Design Right

The claimant claimed design right in the design of the jeans when worn as well as the shape of their rubberized internal support panel and the shape and/or configuration of the inner parts of the upper rear portion of the garment or, alternatively, the shape and/or configuration of the knitted fabric panels and the shape and/or configuration of the internal rubberised panels on their own.  

The defendants had admitted that they had copied the claimant's designs to make their original jeans and the modified range differed from the original range in only one detail but their defence challenged the subsistence of design right in the designs.

Their objection to the designs as worn was that the shape of a pair of jeans "when worn"was not protectable, because it is a shape which is infinitely variable depending on the particular person wearing the jeans. As they put it in their defence: 

"the design is not the shape or configuration of an article as such, but the shape and configuration adopted by an article as produced where worn by a particular individual".

The claimant tried to draw an analogy with a balloon which is quite undistinguished in the packet but when inflated, it adopts a fantastic shape of an animal.  Mr Stone rejected that argument:

"Air blown or pumped into a balloon will take the shape of the balloon, because the air within the balloon is at a consistent pressure throughout. A human body part inserted into a balloon will not take the shape of the balloon – rather, the balloon will take the shape of the body part."

He held that design right did not subsist in the design of the jeans when worn because they did not constitute a protectable design.

The defendants challenged the subsistence of design right in jeans on their own on the grounds that the properties of the fabrics were not features of configuration or, alternatively, were a method or principle of construction.  The deputy judge rejected the first contention at [104]:

"It seems to me that the notion of shape and configuration in unregistered design law is a broad one, and therefore ought to be able to encompass the concept of movement. I see no reason why unregistered design law ought not protect, for example, the shape and configuration of a collapsible bowl, or a sofa bed. Certainly, many of the designs referred to in the case law of this court are for articles which have been capable of being moved (including, for example, the umbrella case in A Fulton Co Limited v Grant Barnett and Co Limited [2001] RPC 16 or the suitcase in Magmatic Limited v PMS International Limited [2013] EWHC 1925 (Pat): Arnold J's findings in relation to unregistered design rights were not disturbed on appeal."

As to the principle or method of construction objection, Mr Stone referred to Mr Justice Park's judgment in Fulton at [70]:

"It is certainly true that there are methods of construction involved in the creation of the Miniflat case. One is the method whereby the case retains its rectangular box-like shape when the umbrella is not contained within it. Another is the stitching technique which creates the outward-pointing seams on the edges and at the corners of the case. However, the design of the case is the shape or configuration produced by those methods of construction, not the methods by which that shape or configuration is produced. The fact that a special method or principle of construction may have to be used in order to create an article with a particular shape or configuration does not mean that there is no design right in the shape or configuration. The law of design right will not prevent competitors using that method or principle of construction to create competing designs (of course other areas of the law, like patents, might prevent competitors doing that), as long as the competing designs do not have the same shape or configuration as the design right owner's design has."

Mt Stone rejected the objections on the basis that the precise shape of the rubberized panel was a protectable design.  That was true of the other features that were attacked by the defendants,  The defence had also raised the must match, must fit and surface decoration exceptions each of which was disposed of shortly,  The learned deputy judge concluded at [121]:

"In my judgment, the RSP Design, the Inner Parts Design and the JOTO Design are infringed by the Second HUGZ Jeans. Had I found that the When Worn Design was valid, I would have found that it too is infringed by the Second HUGZ Jeans."

Breach of Contract

By the settlement agreement of 3 April 2019, the defendants undertook not to "make, have made, sell, offer to sell, use, import or export clothing which, if sold in the UK, would infringe EP 266 377 B1 or any unregistered design rights owned by Freddy and identified in the Letters (the "Infringing Products"), or assist anyone else to do so." That undertaking was clearly breached by the infringement of the patent but there was some doubt as to the design rights relied upon.  That uncertainty was removed by the party to party correspondence which enclosed photos of the claimant's jeans.  In Mr Stone's view, making and selling the modified HUGZ jeans were clear breaches of the agreement.

Comment

This is a very substantial case that would have required a 3-day trial had the defendants turned up.  The deputy judge could have struck out the defence under CPR 39,3 (1) (c) and given judgment in default but the claimant wanted a judgment following a trial of evidence and argument that it could use in other disputes.  It is arguable that the learned deputy judge extended the law of passing off by following Datacard and Levi Strauss and in that regard at least it is regrettable that there was no argument from the other side.   

Anyone wishing to discuss this article or patents, design right and passing off generally may call me on 020 8404 5252 during office hours or send me a message through my contact form.