Intellectual property

G-Star Raw Cv v Rhodi Ltd and others: Chancery Division: 6 February 2015

Design – Design rights – Claimant and defendants making clothing – Defendants making jeans outside UK – Claimant company bringing proceedings against defendants, alleging defendants being involved in infringement in UK unregistered design rights in the design of claimant’s jeans

The claimant company, G-Star, carried on business as a designer, manufacturer and distributor of clothing and fashion accessories. The defendants made their own jeans abroad. The first to sixth defendants (the corporate defendants) were companies involved in the making of jeans. The third and sixth defendant companies did not trade. The seventh and eighth defendants were individuals involved in the business of the other defendants.

G-Star sought injunctions, orders for delivery up and other relief in respect of alleged infringement of the UK unregistered design rights in the design of a pair of contemporary jean trousers known as the Arc Pant. G-Star alleged that nine styles of jeans sold by the defendants (the Rhodi jeans) infringed its rights.

G-Star submitted that the Rhodi jeans were ‘infringing articles’, pursuant to section 228(3) of the Copyright Designs and Patents Act 1988 (the 1988 act), on the basis that: (i) they had been imported into the UK; and (ii) they had copied G-Star’s design so as to produce articles exactly or substantially to that design, such that they would have infringed G-Star’s unregistered design rights if they had been made in the UK. G-Star’s claim against the corporate defendants was accordingly for secondary infringement pursuant to section 227 of the 1998 act.

The court ruled:

On the evidence, it was plain that unregistered design rights subsisted in the Arc Pant designs, and that G-Star was the owner of those rights. Garments made to the Arc Pant designs had first been made available in 2008. The similarities between the Arc Pant and the Rhodi jeans were striking. The defendants had not provided a satisfactory explanation of how the Rhodi styles had been produced, nor had they come anywhere near rebutting the inference that they had been produced by copying the Arc Pant designs.

The similarities between the Arc Pant and the Rhodi jeans had arisen from copying. Both the first and fourth defendant companies had participated in material acts of secondary infringement. However, the extent of their participation was still to be determined. G-Star had made out the knowledge requirement in respect of the first, second, fourth and fifth defendants. However, G-Star had not proved its claims either the seventh or eighth defendants (see [60], [61], [97], [139], [148], [170], [188] of the judgment).

G-Star’s claims against the first, second, fourth and fifth defendants succeeded. However, the claims against the third, sixth, seventh and eighth defendants failed (see [190] of the judgment).

C & H Engineering v F Klucznik & Sons Ltd (1992) IP & T Digest 9 applied; Rolawn Ltd v Turfmech Machinery Ltd [2008] All ER (D) 77 (May) applied; Virgin Atlantic Airways Ltd v Premium Aircrafts Interiors Group Ltd [2009] All ER (D) 166 (Jan) applied; Frayling Furniture v PRemier Upholstery Ltd [1999] 22(5) IPD 22051 considered; L Woolley Jewellers Ltd v A & A Jewellery Ltd [2002] All ER (D) 489 (Jul) considered; A Fulton Co Ltd v Totes Isotoner (UK) Ltd [2003] All ER (D) 33 (Nov) considered.

Hugo Cuddigan (instructed by Wragge Lawrence Graham & Co LLP) for G-Star; Jonathan Hill (instructed by Kuit Steinary Levy LLP) for the defendants.