IPEC considers post-sale confusion and passing off
The UK’s Intellectual Property Enterprise Court in Freddy SPA v Hugz Clothing Ltd & ors  EWHC 3032 (IPEC) has given a decisive victory to the claimant in a case that considers the importance of the role that passing off, patents and unregistered designs can play when combatting copycats in the fashion industry.
Freddy SpA is an Italian fashion company that designs and produces a popular line of shapewear jeans sold under the WR.UP brand (see below left), as it has done since 2012. According to Freddy, its body-enhancing jeans “smooth, shape and sculpt” the hips of the wearer and provide lift and definition of the buttocks. Freddy enjoys a good market position and its jeans are sold worldwide in over 40 countries, the UK making up 11% of is its annual global sales.
The defendants (Hugz) also sell shapewear jeans (see above, right) and clothing. Freddy complained that Hugz’s first iteration of its jeans were a copy of its WR.UP jeans, which Hugz admitted to and the dispute was resolved by settlement agreement. Hugz then attempted to design around the WR.UP jeans with a second version. Freddy started proceedings in the IPEC, stating that Hugz breached the settlement agreement, infringed its patent and various unregistered design rights, and were passing off.
The defendants filed and served a defence but did not submit witness or expert evidence, nor did they participate in the trial. Under the court’s procedural rules, the defence could have been struck out, but as the claimant wanted a reasoned judgment from the court, they proceeded anyway, treating the defence as evidence in chief of the defendant.
Passing off - goodwill
The claimant asserted that it owns goodwill in the get-up of the jeans, in particular the combination of several elements including: the badge and where it is positioned on the pocket; the shape and seams of the pockets, each having several curved seams and a straight one; and the central rear belt loop, sewn at an angle. In other words, all the elements making up the ‘posterior’ area of the jeans.
The defendants rejected that goodwill could subsist in the get-up. They asserted that goodwill, if any, could only attach to the brand(s), as the jeans are sold by reference to FREDDY or WR.UP.
Upon consideration of the evidence, deputy judge David Stone found that the claimant was purposeful in marketing the elements of the get-up, so much so that customers had been sufficiently educated and therefore associated those elements with the claimant. He held that the claimant owned goodwill in the get-up.
Misrepresentation / damage
The deputy judge had no hesitation finding that there was conventional passing off, stating that the Hugz jeans are an obvious rip-off through the adoption of similar branding elements/get-up, and in the manner in which they were sold.
The deputy judge went on to consider whether there could be post-sale confusion, rarely considered in the context of passing off, but generally established under EU trade mark law and followed in the UK.
The logic behind post-sale confusion in this case is that a consumer, who is not confused at the time of purchase, buys the jeans wanting others to believe that the knock-off, when worn/used, is associated with (or is) the original. In that sense, the customer continues to “sell” the product as it is worn, confusing other potential consumers.
Such a premise has no equivalent in UK case law, but the claimant relied on New Zealand High Court case Levi Strauss and Co and Anor v Kimbyr Investments Limited  FLR 335 in which the judge found that some people, upon seeing knock-off jeans in the real world, would think it to be very attractive to buy a cheaper pair of jeans with a red tab that could be passed off as the real thing. The New Zealand court held that the owner of goodwill is entitled to protection throughout the lifetime of the product, not just at point of sale.
Deputy judge Stone found the New Zealand case highly persuasive and held that the misrepresentation made by the Hugz jeans would be ongoing every time the jeans are worn by the consumer, despite the consumer not being confused at the time of purchase.
The claimant claimed that Hugz had infringed its unregistered designs, for which the defendants raised two primary objections:
- “definitional” objections; and
- whether the designs were excluded from protection.
In relation to the former, the defendants objected to the claimant’s claim that the shape of the jeans when worn could produce a protectable design, which the deputy judge agreed with, finding that it is the shape of the wearer that will ultimately determine the resultant shape of the jeans when worn. The defendants also objected to a claimed design for shape and configuration of the jeans, including the moveable elasticity of the fabric. The deputy judge could find no reason in law as to why configuration could not allow for any consideration as to the movement of material, referring to case law for other moveable products (A Fulton, Magmatic etc), and held that the design was protectable.
Turning to the latter objection, the defendants ran all the main statutory exclusions to design protection, all of which failed. Of interest is the judge’s finding on the must match exclusion, which the judge considered despite having already found the when worn design invalid. The principle is that a design cannot subsist where it is dependent on another article, to form an integral part. A previous case (Ocular Sciences) had considered the possibility that the human body could be an “article” in respect of contact lenses, but the deputy judge was not prepared to apply this in respect of jeans, particularly because there is no integration with the human body to form an integral part.
The Freddy patent teaches a multi-element knitted fabric adapted to cover various parts of the buttocks, with one of the elements (the upper central element) secured together along the seams at the centre.
The deputy judge found that the patent was novel and not obvious over the prior art, which consisted of underwear constructed as one piece and a patent for trousers that did not teach resilience of fabric, unlike Freddy’s patent.
On infringement, as the defendant had admitted the first iteration of the Hugz jeans were a copy, the only issue for the judge to consider was whether the design-around of the second version, being a single piece of fabric covering lateral portions of the buttocks rather than multiple pieces, fell within the scope of the claim.
The deputy judge held that there was no teaching in the patent that required the product to have separate pieces of fabric, and found that the design-around infringed.
This decision will almost certainly pique the interest of the fashion industry, particularly those who have questioned the usefulness of passing off or patents in the past.
There remains a question as to whether there would have been a different result had there been opposing evidence, but there are interesting propositions of law raised in relation to get-up and post-sale confusion which will almost certainly be tested by the courts in the future, particularly where confusion is twice-removed from the defendant, such as it was here.
However, industry will welcome the common sense logic of the judgment, the flexibility of passing off as a potential claim and the suggestion that designers are entitled to longevity of protection in any goodwill that they own in their designs.