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Oh (no) Polly – clothing brand infringed the design rights of a direct competitor the High Court finds

17 March 2021. Published by Sarah Mountain, Senior Associate and Ellie Ward, Associate

The High Court has held that G4K Fashion Limited, trading as 'Oh Polly', has infringed UK unregistered design rights (UKUDR) and community unregistered design rights (CUDR) owned by Original Beauty Technology Company Limited (Original Beauty) by copying several of its 'bodycon' and 'bandage' garments. Original Beauty was, however, unable to establish passing off.

Background

For those unfamiliar with fashion terminology, 'bodycon' dresses emphasise body contours. 'Bandage' dresses have a similar effect and are made of thick, stretchy bandage-like material.

Original Beauty sell bodycon and bandage dresses mostly online, but with some physical stores in the UK and US. Their main brand is 'House of CB' but certain lines are sold under its sister brand, 'Mistress Rocks'. Oh Polly is a direct competitor of Original Beauty and sells bodycon and bandage dresses online.

In this case, Oh Polly's designer took images of certain House of CB garments and sent them to factories to be reproduced. Oh Polly also copied House of CB's business model, social media, marketing, packaging and presentation. It had even used the same models and the same locations for some of its photoshoots.

Original Beauty claimed that Oh Polly had infringed its unregistered design rights (the flagrancy of which, it argued, justified an award of additional damages). Original Beauty also claimed that the extent to which Oh Polly had copied its business model, social media, marketing etc. amounted to passing off, on the basis that this was sufficient to deceive consumers into thinking that Oh Polly was a sister brand of House of CB.

Unregistered Design Rights

Under s.226(2) of the Copyright, Designs and Patents Act 1988 (the Act), primary infringement of a design right arises where articles have been reproduced by copying the design. A simple, causal link is enough to establish copying. Therefore, if House of CB's designs contributed to Oh Polly's creation of its design, there was copying. Whether such copying amounts to infringement will depend on whether or not what has been reproduced is sufficient.

Under the Community Design Regulation (EC) No.6/2002 (the Regulation), David Stone (sitting as Deputy High Court Judge) focused on each design's individual character and whether the allegedly infringing item produced a different overall impression.

The court compared 20 garment designs and concluded that all were valid and that seven of House of CB's garments had been copied by Oh Polly.

Given that the garments were made either exactly or substantially to House of CB's unregistered design, the court held that there was infringement of House of CB's UKUDR.  As Oh Polly's garments produced the same overall impression as the House of CB's garments, there was also infringement of House of CB's CUDR.

In his judgment, David Stone stated that Oh Polly's designer of the garments had a 'couldn’t care less' attitude about the rights of others and, as a designer, she ought to have known that such activity was not lawful. He also held that as Oh Polly's designer took an image of House of CB's garments and sent it to factories to be reproduced, this was sufficient to award additional damages, for flagrancy, in relation to those designs.

Passing Off

In relation to the copying of House of CB's business model, social media, marketing, packaging and presentation, the court found that rather than spending money trialling garments and packaging, Oh Polly had ridden on the coat tails of House of CB's success, and obtained an advantage by copying a competitor.

However, while House of CB and Oh Polly customers noticed the many similarities between the brands, with one social media user stating "Oh Polly fully copying House of CB designs" and another stating "Oh Polly wanna be House of CB so bad," the court concluded that there was insufficient evidence that a substantial number of consumers had been deceived into thinking that there was a connection between the parties or that Oh Polly and House of CB were sister brands.

Several social media posts were provided by House of CB as evidence of confusion, including: "Do you own "Oh Polly"? they have a very similar style to House of CB" and "See a lot of similarities between you & "ohpolly" (models, style, insta) are you sister cos?". However, the court held that this evidenced only that the writer had been 'caused to wonder' rather than being deceived or misled into considering that Oh Polly was a sister brand of House of CB.

The claim for passing off, therefore, failed.

Comment

This case serves as a useful reminder of the importance of evidence of confusion in a passing off claim. Even where there is flagrant copying of much of a brand's products and packaging and/or an attempt to ride on a competitor's success, a claim in passing off is likely to fail unless the claimant can show that consumers have been deceived or misled to believe that the brands are connected. Here, given Oh Polly's flagrant actions, the court noted that passing off was not a tort of unfair competition and expressed its reluctance in reaching the conclusion that the claim for passing off failed.

The full judgment for Original Beauty Technology Co Ltd and others v G4K Fashion Ltd and others [2021] EWHC 294 (Ch) is available here.