The Claimant, Freddy SpA, successfully enforced its rights against a copycat body enhancing jeans product. The Claimant designed and sells body enhancing jeans under its WR.UP brand. The Defendants sold copies of those jeans under their HUGZ brand (First HUGZ Jeans). The Defendants admitted that the First HUGZ Jeans were copied from the Claimant’s product and the parties entered into an agreement to settle the Claimant’s complaints about those jeans (Settlement Agreement). Shortly after the Settlement Agreement was entered into, the Defendants started to sell a new version of their jeans, again under their HUGZ brand (Second HUGZ Jeans). The Claimant brought proceedings for: (i) breach of the Settlement Agreement; (ii) patent infringement; (iii) infringement of various UK unregistered design rights; and (iv) passing off.

The Defendants initially participated in the proceedings, including by filing an Amended Defence and Counterclaim, but later stopped participating and filed no evidence of fact, or any expert evidence. At a PTR hearing, the Court shortened the length of the trial from 3 days to 1 day and excused the Claimant’s witnesses from appearing. Whilst the Claimant would have been entitled to ask the Court to strike out the Amended Defence and Counterclaim due to the Defendants’ non-attendance, the Claimant instead requested that only the Counterclaim (for invalidity of the patent and groundless threats) be struck out, on the basis that a reasoned judgment from the Court on its claims would be of value to the Claimant in enforcing the patent in the future. The Court duly struck out the Counterclaim.

Without the benefit of any evidence or legal submissions from the Defendants, Deputy Judge David Stone’s task was to evaluate whether the Claimant’s claims were made out on the evidence. In this update, we focus on the issues which are likely to be of most interest to those in the fashion sector, and those which are of wider application.

The Defendants had admitted that the First HUGZ Jeans fell within the scope of claim 1 of the patent, so the question for the Judge was whether the design-around embodied in the Second HUGZ Jeans fell outside the scope of claim 1.

Although the counterclaim for invalidity of the patent had been struck out, the Judge still had to consider invalidity as a defence to infringement. The Judge had no difficulty in dismissing the Defendants’ attacks based on novelty and obviousness on the basis of the expert evidence filed by the Claimant which the Judge found to be “carefully prepared and convincing”.

The question of infringement turned on the number of “elements” required by the patent. Three were required. The Defendant’s Second Hugz jeans had two substantially distinct pieces which remained joined by a small bridge of fabric. The issue was whether these constituted one or two “elements”. Based on the Claimant’s expert evidence, the Judge accepted that it was not necessary to construe ‘element’ as meaning two totally separate pieces of fabric, so there was infringement. The Judge found that there would also have been infringement under the doctrine of equivalents.

The Claimant relied on a combination of features of the appearance of the WR.UP jeans for the purposes of its claim based on passing off, including the shape of the rear pockets, the appearance and position of a metallic badge, and a slanted rear belt loop. The Defendants argued that the Claimant’s jeans were sold by reference to the brands FREDDY and WR.UP and that any goodwill related to those brands, which the Defendants did not use. They also alleged that it was not customary or conventional for women’s jeans to bear branding elements on their rear pockets.

The Judge found that the Claimant’s expert evidence established that it was customary and conventional for women’s jeans to bear branding elements on their rear pockets, and further that the Claimant had educated the public through its marketing that the get-up relied on was an indicator of origin. Having considered the get-up of the Second HUGZ Jeans, the Judge found that the Second HUGZ Jeans are “an obvious rip-off of the WR.UP Jeans” and had no hesitation in finding that there had been passing off on the basis that the Second HUGZ Jeans misrepresented that there was a connection in the course of trade with the Claimant.

The Judge then considered the Claimant’s additional claim for passing off based on post-sale confusion, which is a recognised concept in trade mark law. This type of misrepresentation occurs where a consumer knows that she is purchasing a knock-off at the point of purchase but does so because she wants other consumers to believe that the jeans are associated with the Claimant. The Judge noted that it would have been preferable to hear argument from the Defendants on this point, but took particular of note of a case from the High Court of New Zealand in a case with strikingly similar facts in which post sale confusion had been found to be sufficient to amount to misrepresentation in a claim for passing off. The Judge was satisfied that it was appropriate to apply the post-sale confusion doctrine to the claim for passing off in this case, and endorsed the finding of the New Zealand Court that the owner of goodwill is entitled to have it protected throughout the life of the product, not just at the point of sale.

The Claimant relied on a number of unregistered design rights, for different aspects of the shape and configuration of the WR.UP jeans. The Defendant objected to these designs on the basis that the designs had not been properly defined, and that they were excluded from protection. The Judge gave very short shrift to the Defendants’ arguments based on the various exclusions from protection, rejecting each of them in turn, and so we do not consider them further here.

One of the designs relied on was for the shape of the WR.UP jeans when worn (emphasis added). The Defendants objected to this design on the basis that this design was for a shape that is infinitely variable depending on the particular person wearing the jeans. The Claimant had itself pleaded that the shape of the jeans when worn would in part be determined by the shape of the wearer, but argued that all wearers would have their buttocks both lifted and separated. The Judge rejected the Claimant’s submissions and found that the design as claimed did not constitute a protectable design.

As an alternative, the Claimant relied on a further design for the shape and configuration of the jeans on their own, but including the elastic nature of the fabrics and materials making up the garment. The Defendants argued that the elastic nature of the fabrics and materials were not features of the configuration of the article and/or were methods or principles of construction. The Judge found that the notion of shape and configuration in unregistered design law is a broad one, and ought to encompass the concept of movement, concluding that the elastic nature of the fabrics and materials constituted the shape and/or configuration of an article and was protectable as a design.

The Defendants had admitted to copying the WR.UP jeans, and the Judge found that the Second HUGZ Jeans were also made exactly or substantially to the WR.UP jeans. The Defendants were held to have infringed the three designs which were found to be valid and subsisting.

Pursuant to the Settlement Agreement, the Defendants had agreed not to sell any products which infringed the patent or the designs identified in correspondence between the parties or as set out in the Settlement Agreement. Those designs made no reference to the designs as worn, and the Judge concluded that they subsisted and were not invalid, and that the Second HUGZ Jeans were made exactly or substantially to them. Accordingly, the Defendants were in breach because the Second HUGZ Jeans both infringed the patent and the rights in the designs.

Citation: Freddy SpA v Hugz Clothing Ltd and oths [2020] EWHC 3032 (IPEC)