“At the pre-trial review, I ordered that the issues of liability in relation to the unregistered design rights were to be tried based upon 3 designs selected by Neptune and 3 designs selected by DeVOL. With hindsight, it would have been better if I had limited the parties to a single design each, as the same issues could have been fully argued. In future (irrespective of whether the claim is part of the Shorter Trial Scheme) where multiple designs are in issue, it would be sensible to confine the liability trial to an appropriate, and limited, selection.”
“Say there was a particular trend, for example Kim Kardashian wore a lace up dress which started to trend, I would have an image of the sort of design I wanted to produce as my own version of that popular or trending style. At this point, I might go through my saved pictures and set up a new folder on my laptop and put into that folder all the images of dresses that were very similar, that had a particular colour or maybe that had a little design feature that I thought would work well with the lace up design I had in my head. Other times, it was quicker to do an internet search to find an image similar to the concept I had in my head for illustration purposes, rather than go back through images I’ve already saved. Instead of printing material out, my moodboard is a folder of images. From there, I use the images as a reference point for the design of the garment I had conceptualised in my head and which I wanted to produce.”
“In 2018, bralettes were really in style and the single-shoulder, knotted effect appeared to be a trend, particularly for swimwear, as evidenced by the images I had saved and are visible at CLH16.”
“Both garments are fairly basic, as evidenced by the research I had done and the images I had saved, which are visible at CLH18.”
“Q. And if you scroll down you can see those two images there which, presumably, correspond to the two Dropbox links? A. Yes, I believe so. Q. Ms. Henderson, do you say that in the course of preparing, of creating the design for [D7] you actually looked at either of the two dresses in the top image or the dress on the bottom image? A. My Lord, I think I would have been familiar with them, yes, because usually my process, as I have set out numerous times now, when I am looking at creating a new design, I will also, let us just say, for example, that I have the Mariah Carey image and the Liz Hurley image and I like those and that is a design that I want; I will still refer to my Dropbox to see if there is any features that maybe in my Dropbox I have saved that I like. So I will refer to those, yes. Q. Ms. Henderson, you did not answer my question. A. Sorry, what was the question? Q. My question was, in the course of designing [D7] ---- A. Okay. Q. ---- did you, as a matter of fact, go back to your Dropbox and look at any of the dresses that we see on page I1300 or I1302, "yes" or "no"? A. I believe I would have, yes, my Lord. I believe I would have. Q. I am not asking you what you believe. Did you, Ms. Henderson, "yes" or "no"? A. I believe, based on the process that I used to work, I would have seen these, yes. I do not believe that the process to create this garment would be any different to the process that I used to create every garment. So with that regard, yes, I would have seen these images. To the best of my knowledge, yes, I believe I would have seen these images. Q. The answer, Ms. Henderson, is you do not know? A. It is not the answer, my Lord. If it was the answer I would be honest and that is what I would say. Q. You do not know because you have just said you "believe". You do not say you know, you do not remember? A. I believe I would have because that is the process that I use for every single garment that I produce. That is the purpose of me having my Dropbox and having all the folders. It is so that I can refer back to them on a frequent basis which is what I do. It is what I did all day every day. Q. I will ask you one more time, Ms. Henderson. A. Okay. Q. Are you confident, as a matter of fact, that you looked at each of these dresses in the course of designing D7? A. I am confident, yes. Q. Are you confident yes or no? A. Yes, I am confident, my Lord. I am confident based on how I design a garment. I am confident. That is how I design a garment. I have something in mind, even if I have a specific, even if my idea and I have an illustration and it is very clear, I will always, always, always go back to my Dropbox, because there may be another add-on feature in my Dropbox that will help enhance the design. I refer back to my Dropbox for colours. I am always within those folders, always.”
“Q. Did you prepare that document? A. I put the images together. I had phone calls with [Dr Branney] over the course of about one week and we put the images together. So it was myself who went through my Dropbox because, obviously, [Dr Branney] is not so aware and then he would put he had put them together for the lawyers, I believe, yes. Q. Roughly when did that happen? A. I think it was about June time, June/July, yes, maybe like June when I, before I left, so probably about June, maybe. Q. All right, and that is true for each of the documents you were taken to that looks like this, so each of the lists of computer codes? A. We went through all of the designs, my Lord, yes. It took quite a while. But in putting the document together that was [Dr Branney] who had actually put it together, if you know what I mean. I did not sit here putting it together. I just went through on phone calls and confirmed the images with him and then sometimes he would show me an image just to confirm if it was from my laptop.”
“Save that garment C35 was referenced in the creation of the design for garment D35, the Defendants created the designs for the Oh Polly Garments independently and without copying any of the designs relied on by the Claimants.”
“Whilst in some instances a House of CB garment was referenced in the creation of the design for the Oh Poly garment, in all cases other than D35, for which the allegation of copying is admitted, the Defendants created the designs for the Oh Polly Garments without copying any of the designs relied on by the Claimants.”
“For their allegation of deliberate destruction of disclosable documents to be sustainable, it would have to be the Defendants’ position that the Claimants are obliged to ensure that their design companies preserve all of their mood boards for an indefinite period – even though they have no use for them – in case at some point in the future they come to suspect that the Defendants have copied another of their garments. That is clearly wrong.”
“In order for design right to subsist, a design must be “original” in the copyright sense of originating with the author, and not being copied by the author from another: see Farmers Build Ltd v Carrier Bulk Materials Handling Ltd[1999] RPC 461 at 475, 482. In Magmatic v PMS at [84] I expressed the view that the test is whether sufficient skill, effort and aesthetic judgment has been expended on the new design to make it original. During the course of argument in the present case, the question was raised whether “original” should be interpreted in the same manner as the CJEU has interpreted the requirement for originality in the context of copyright, that is to say, as requiring creativity on the part of the designer: see C-429/08 Football Association Premier League Ltd v QC Leisure [2011] ECR I9083,Case C-145/10 Painer v Standard Verlags GmBH[2011] ECR I-12533 andCase C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [EU:C:2012:115]. I shall assume, without deciding, that this is the correct approach.”
“59. In Ocular Sciences[1997] RPC 289 Laddie J explained that the commonplace exclusion applies to “any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no peculiar attention in those in the relevant art”
“(1) A defendant alleging that a design is commonplace should plead the significant features of the design as he contends them to be, the prior art relied on in which those features are said to be found and the date from which each cited item of prior art was available to designers in the relevant design field. (2) Prior art which renders a design commonplace will not be obscure. The evidential burden rests on the defendant to show that it is not. (3) A design will be commonplace if it is shown to have been current in the thinking of designers in the field in question at the time of creation of the design, see Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd[2005] RPC 6 at [56]. Another way of looking at this is that a commonplace design will be one which is trite, trivial, common-orgarden, hackneyed or of the type which would excite no particular attention in those in the relevant design field, see Ocular Sciences Ltd v Aspect Vision Care Ltd[1997] RPC 289 , at p.429, approved in Farmers Build Ltd v Carier Bulk Materials Handling Ltd[1999] RPC 13 , at pp.477 and 479. A third way of characterising a commonplace design is that it will be ready to hand, not matter that has to be hunted for and found at the last minute, see Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd[2005] EWCA Civ 761 ;[2005] RPC 36 , at [60]. (4) The design field in question is that with which a notional designer of the article in issue is familiar, see Lambretta Clothing at [45]. (5) A design made up of features which individually are commonplace is not necessarily itself commonplace. A new combination of run-ofthe-mill features may not be commonplace. See Ocular Sciences at p.429, approved by the Court of Appeal in Farmers Build at p.476 and in Ultraframe at [64]. (6) If the designer of the accused article has expended sufficient skill and labour to make his design original (in the copyright sense) over a single piece of commonplace prior art, he is liable also to have succeeded in creating a design that is not rendered commonplace by that prior art.”
“49. The correct approach to considering whether an allegedly infringing article is produced exactly or substantially to the design was set out by Aldous J in C&H Engineering v F Klucznik & Sons Ltd (No.1)[1992] FSR 421 at p 428: “Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus, the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff’s design must be an objective test to be decided through the eyes of the person to whom the design is directed.”
“The House of Lords decided in Ladbroke (Football) Ltd v William Hill (Football) Ltd[1964] 1 WLR 273 that the question of substantiality is a matter of quality rather than quantity … But what quality is one looking for? That question, as it seems to me, must be answered by reference to the reason why the work is given copyright protection. In literary copyright, for example, copyright is conferred (irrespective of literary merit) upon an original literary work. It follows that the quality relevant for the purposes of substantiality is the literary originality of that which has been copied. In the case of an artistic work, it is the artistic originality of that which has been copied.”
“19 … As Aldous J observed in the passage I have set out in the Klucznik case, there is a difference between an enquiry into whether the item copied forms a substantial part of the copyright work and an enquiry whether the whole design containing the element which has been copied is substantially the same design as that which enjoys design right protection. The enquiry which the judge carried out was that set out in paragraph 119 of his judgment. At no stage did the judge refer to the different test applicable to design right infringement. On that test, it may not be enough to copy a part, even a substantial part. Regard has to be had to the overall design which enjoys design right. Here the judge was diverted to certain difficult questions arising as to substantiality in copyright infringement which may have no relevance to design right infringement.”
“We recognise that potential inconsistency, but let us be crystal clear: it is a squeeze on subsistence and infringement. [The Defendants] say the evidence is now clear that there is no material difference between the design process that [the Defendants] follow and the design process that [the Claimants] follow: both are following trends and casting very wide nets for inspiration. They create either physical or digital mood boards from which the trends are visible and from which the designers take ideas and even design features. If that is by its nature copying, then [the Claimants] have no design rights. If it is not copying, then rights do subsist in [the Claimants’] designs but [the Defendants] have not infringed them because they have not copied the designs and the right is sufficiently narrow that the Defendants’ designs fall outside them.”
“…but if the court holds that none of the [Claimants’] designs is commonplace over any of the prior art, nonetheless, [the Defendants’] reliance on that prior art in support of their case on commonplace is a useful cross-check on the breadth of [the Claimants’] claim to infringement.”
“The consideration of originality and commonplace in the context of UKUDR frames the infringement analysis and that has always been our primary goal.”
“there has not been copying either because the idea for the garment was conceived before the House of CB / Mistress Rocks garment was referred to or one or more other garments were also referred in the process, or both.”
“Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned: i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46); ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53); iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62); iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59); v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55). I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).”
“…the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking into account of differences that are sufficiently marked so as to produce dissimilar overall impressions (judgment of29 October 2015 , Roca Sanitario v OHIM — Villeroy & Boch (Single control handle faucet), T-334/14, not published, EU:T:2015:817, paragraph 16).”
“This is a ruched body hugging dress. The dress has horizontal ruching all over. The top has an off shoulder design with wide ruched straps that meet in the middle across the chest. These straps continue across the bust [although the Defendants submitted that the straps do not continue across the bust. They are broken up with a buckle], leaving a triangular shaped cut out to the centre bust [although the Defendants submitted that the cut out is more “dome” shape than triangular]. The waist sits high and the ruching comes from both side seams. The skirt sits just above the knee. The back is off shoulder [and the Defendants noted that C2 has a back seem]. This item comes in Wine silky jersey fabric.”
“This is a smooth strappy body hugging maxi dress. The front has a scoop plunge neck, it has skinny shoulder straps and a backless cut [although the Defendants submitted that the back is high waisted rather than backless]. The straps extend around the shoulder and join under the arm [the Defendants said at the bust]. The skirt of the dress sits at the waist at the back and it has a back vent. This item is sold in Deep Mocha and Red silky jersey.”
“This is a strappy back knee length dress [although the Defendants said it finishes above the knee]. It has a smooth plain finish. It has a bib front and slim spaghetti straps. The straps cross over at the back and tie at the back. The skirt is knee length. The skirt falls to a slight V-shape at the back centre waist below the ending of the straps. This item is sold in Nude. Presented in a smooth stretch light crepe [although the Defendants said it is not stretchy].”
“This is a high necked long sleeve mini dress. It has a round neck and a deep waistband at the front. It has two slits running down the front of the skirt from the bottom of the waistband to the hem at the position of the centre of the thighs. There are six rectangular loops sewn into the edges of the slits and a ribbon with metal ends is laced through these loops with the ends of the ribbon hanging down below the hem. At the front of the top there is a central panel of fabric which ends at the top of the slits [the Defendants said it stops at the waist band]. The side panels loop under the arms and continue at the back of the top and down the side of skirt. There is a zip down the entire length of the centre back of the dress. It has narrow panels of fabric either side of the centre back at the top, a deep waistband and the skirt also has narrow panels of fabric either side of the centre back. Presented in a stretch crepe. This garment is sold in black [although the Defendants said that C9 is shown in navy on the House of CB website and in the sample provided].”
“This is a sleeveless playsuit with a bib front with a straight across neck, wide straps that pass over the shoulders and cross the back passing through loops at the bust line of the bib and meeting at the centre of the back with a metal buckle. It has a wide waistband and the shorts have wide legs with a zip down the centre back seam and deep darts from the waistband at the back of the shorts. This garment is sold in white stretch lightweight crepe [although the Defendants said the sample was 100% polyester and had no stretch].”
“This item is a long sleeved ruched mini dress. This dress has long sleeves and a low scoop neck ending in a soft V-shape. The front is ruched from the middle and has 2 rows of eyelets running down the centre from the V of the neckline to the hem. There is a lace threaded through the eyelets in a criss-cross fashion. The back of the dress is plain. The skirt sits mid thigh[.] This item is sold in Black stretchy mesh chiffon fabric [although the Defendants said it is chiffon, not mesh].”
“This is a strapless close fitting dress with sweetheart shaped neck at the top of the front of the dress [although the Defendants said it is actually curved, not sweetheart] and a deep strip of fabric running around the top [although the Defendants said this is actually a fold over of fabric with a vertical bust seam], a fluted hem made of horizontal strips of fabric and a zip at the centre back seam with two deep strips of fabric running down the centre back. This design is sold in white, black, wine, tan and gold. It is made of stretchy bandage fabric.”
“This is a short long sleeved dress. It has a round neck and the front is made of 3 panels of fabric with a wider panel running down the centre and narrow panels at the sides. It has two V-shaped cut outs either side of the neck which finish at a point just above each breast. The sides of the cut outs are punctured with four metal eyelets and a narrow strip of fabric is laced through the eyelets. There is deep waist band across the side front panels and the back of the dress. It has a high neck at the back and a zip running down the entire length of the centre back. This garment is sold in baby pink stretch crepe.”
“This is a short backless dress with a halter neck top. The dress has a plunging neckline to the waist. The top left hand front panel of the dress is a strip of fabric which goes up to a point just below the shoulder which is connected to 2 narrow tapes which join together at shoulder level. The top right hand panel of the front of the dress also goes up to a point finishing just above the bust which is connected to a single tape. The tapes connected to the top of the front panels are tied at the back of the neck and hang down to just above waist level. The front panels finish at the waist but give the appearance of crossing at the waist to form a large knot continuing down the sides of the front of the skirt front at hip level. There is a zip in the centre back seam of the skirt. The skirt has no visible waistband at the back and a deep dart on each side from the waist to create a tight fit. This garment is sold in deep green satin.”
“This is a tight fitting, above the knee, strapless dress. It has a straight neckline. The front of the top of the dress is made of 3 panels with a wider central panel and two narrow panels at the sides and the front of the skirt is also made of 3 panels with a matching wider panel in the middle which curves out at the hips and in again towards the hem. There is no waistband. Strips of fabric run down the seams down the front of the dress and these are punctured with metal eyelets and a thin strip of fabric is laced through the eyelets. The top of the back of the dress is made of 2 panels of fabric. There is a zip running down the entire centre back of the dress. The back of the skirt is made of four panels of fabric and strips of fabric run down the seams as in the front which are also punctured with metal eyelets and a narrow strip of fabric is laced through the eyelets. This garment is sold in black latex.”
“This is a sleeveless dress with a scooped neck at the front and a deep scooped neck at the back. There is a slit down the centre front of the dress at the bust which stops just above the waistline and a slit at the centre front of the skirt. There is no waist band at the bottom of the centre front panel of the top of the dress but a waist band around the remainder of the dress. There is a zip running down the centre back seam [although the Defendants submitted that it is a hidden metal zip]. This garment is sold in red stretchy crepe.”
“This is a sleeveless, backless jumpsuit with wide leg flared trousers. The front of the top has a wrap across, halter neck effect leaving a triangle shape cut out above the waistband. The back of the jump suit has a scooped back with a zip at the centre back seam. This garment is sold in peach stretchy sequinned fabric.”
“This item is a vest shaped bodysuit. It has a sleeveless cut and shoulder straps. It is closefitting with a body hugging fit. It has a scoop neckline, a lower scoop back and a thong shape to the briefs. It has a pull on design without any fastenings. This item is sold in Black, White, Tan, Taupe, Grey, Khaki, Nude and Burgundy smooth knit stretchy fabric.”
“This dress has a close fitting smooth body hugging fit. The bust line is cut across the bust with a slight curve up towards the centre bust. It has very thin narrow shoulder straps [although the Defendants submitted that they are connected to the body of the slip with buckles on both sides, so as to be adjustable] and the hemline sits mid thigh. It has a pull on design with no zip. This dress is sold in Nude, Black and White silky jersey elastane.”
“This item is a jumpsuit with a deep plunge neckline. It has an extreme wide leg design. The bust has a deep plunge that meets the waistband. The waistband is wider at the centre and tapers more narrowly towards the sides [although the Defendants rejected this]. The legs have an extreme wide leg cut. The bust has seaming either side that starts at the waistband rising to mid bust. The trousers have a pleat at the front centre of each leg extending from the waistband down each thigh. The back has a backless design that is open to the back waistband. The straps extend over the shoulders down to the waistband. This item is available in Black. [The Defendants also pointed to a hidden zip.]”
“This item is a jumpsuit. It has an extreme plunge neckline. The shoulder straps are wide bands that extend over the shoulders, down the front of each breast and then join to the waistband. The bust is somewhat exposed to the centre front and side. It has a band that runs horizontally under the bust line and around the body. The jumpsuit is tight fitting to the body. The plunge neckline extends down to meet the waistline. The waistline is defined. The legs are tight fitting and tapered to the ankle. This item is available in Rust. [The Defendants submitted that D93 has a closed back with a hidden zip].”
“The recent House of CB one is a copy of Alexander Vauthier but I’ve been seeing similar styles to this everywhere”
“This item is a one shouldered bodycon dress. It is made from white stretch satin. It has one long sleeve to the left hand side. It has a deep plunge neckline that ends in a V to the centre bust. It has a triangular shaped cup, without sleeve, to the right hand side. It has a tight bodycon fit. It is made from a stretch satin with a slight sheen. The hem ends mid thigh. This item is available in White Stretch Satin. [The Defendants submitted that the sample of C102 is not a bodycon fit and is not stretchy. Further, they pointed to a zip and seam down the entire length of the back of the garment, and padding in the shoulder].”
“The evidence from the designers at trial established that there is no difference in kind between the design processes that each side follows. Each keep image libraries of others’ garments to which they are constantly adding and referring back. Each creates mood boards. Each follows trends. Each uses images of third party garments as a useful reference for the factory when giving instructions on how to make or incorporate specific features. Each has a sampling process which involves experiments and modifying the original design idea and which can result in a significantly different garment at the end of the process.”
“The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the getup is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. Thirdly he must demonstrate that he suffers, or in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.”
“The plaintiff’s problem of proof when there is no manifest badge of trade origin such as a trade mark becomes hard. This is so in the case of a descriptive or semi-descriptive word such as ‘camel hair’. It is perhaps even more so where one is concerned simply with the appearance of the article with no self-evident trade origin frill or embellishment. For people are likely to buy the article because of what it is, not in reliance on any belief of any particular trade origin. This is so whether they buy it for its eye-appeal (e.g. glass dogs) or for what it does (e.g. the copy Rubik cube… The plaintiff’s problem of proof lies in relation to the first two items of the trinity, which are related. It is not good enough for him to show that his article is widely recognised – has a ‘reputation’ in that general sense. … I believe that [Learned Hand J in Crescent Tool Co v Kilborn & Bishop Co (1917) 247 F 290 at 300-301] exactly encapsulates what must be shown when the plaintiff is complaining, in a passing off action, about a copy of his product as such. Is the public ‘moved to buy by source?’ It is, I think, because the difficulties of proof are so great that successful cases of passing off based on the shape of goods are so rare.”
“It is recognised that it is more difficult to acquire a sufficient reputation and goodwill in the shape or get-up of a product. Whilst the principal function of a brand name is to denote origin, the shape and get-up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball is an example) does not necessarily, or even normally, conclude that they come from the same source. The claimant must prove that the shape of its goods has come to denote a particular source to the relevant public...”” “The plaintiff’s problem of proof when there is no manifest badge of trade origin such as a trade mark becomes hard. This is so in the case of a descriptive or semi-descriptive word such as ‘camel hair’. It is perhaps even more so where one is concerned simply with the appearance of the article with no self-evident trade origin frill or embellishment. For people are likely to buy the article because of what it is, not in reliance on any belief of any particular trade origin. This is so whether they buy it for its eye-appeal (e.g. glass dogs) or for what it does (e.g. the copy Rubik cube… The plaintiff’s problem of proof lies in relation to the first two items of the trinity, which are related. It is not good enough for him to show that his article is widely recognised – has a ‘reputation’ in that general sense. … I believe that [Learned Hand J in Crescent Tool Co v Kilborn & Bishop Co (1917) 247 F 290 at 300-301] exactly encapsulates what must be shown when the plaintiff is complaining, in a passing off action, about a copy of his product as such. Is the public ‘moved to buy by source?’ It is, I think, because the difficulties of proof are so great that successful cases of passing off based on the shape of goods are so rare.” “It is recognised that it is more difficult to acquire a sufficient reputation and goodwill in the shape or get-up of a product. Whilst the principal function of a brand name is to denote origin, the shape and get-up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball is an example) does not necessarily, or even normally, conclude that they come from the same source. The claimant must prove that the shape of its goods has come to denote a particular source to the relevant public...””
“30. MIL’s case is that a misrepresentation is generated by a combination of the name and get-up of Aldi’s product but the greater emphasis was placed on similarities in the get-up. Mr Edenborough submitted that passing off cases based on get-up that were successful were rare indeed, Jif Lemon being one of the few exceptions which had depended on unusual findings of fact at first instance. He referred to Professor Wadlow’s summary at ¶8-133 of The Law of Passing Off (4th ed): “The difficulty confronting the claimant in all actions for passing-off based on get-up is that it is unusual for one trader’s goods to be distinguished from those of his competitors exclusively, or even primarily, by their get-up. Normally a brand name or other mark is chosen and given prominence and it is this on which consumers are expected and encouraged to rely. To make out a case based solely on similarities of get-up the claimant must show that deception is likely to [sic] notwithstanding the absence of his own brand name on the defendant’s goods and the likely presence there of the defendant’s brand name and perhaps other distinguishing matter. Not surprisingly, the cases in which passing-off has been found have predominantly been ones of deliberate deception.”
“29. It is not easy to establish passing off where the allegedly distinctive indicia consist only of get-up, and the parties’ products bear distinctive names. This was demonstrated in Schweppes Ltd v Gibbens(1905) 22 RPC 601 . The parties’ goods were sold in similarly embossed bottles bearing labels of very similar shape, design and colour scheme, and wording in a similar layout and font. However, they respectively bore the distinctively different brand names “SCHWEPPES” and “GIBBENS” prominently on the label. Lord Halsbury LC held at pp.606-7: “The question that we have to determine is whether in selling the bottle a person is likely to be deceived by the resemblance of the one thing to the other; and if a person is so careless that he does not look, and does not, … “treat the label fairly,” but takes the bottle without sufficient consideration and without reading what is written very plainly indeed upon the face of the label on which the trader has placed his own name, then you certainly cannot say he is deceived—in fact he does not care which it is. … The whole question in these cases is whether the thing— taken in its entirety, looking at the whole thing—is such that in the ordinary course of things a person with a reasonable apprehension and with proper eyesight would be deceived.”
“It appears to me that the real answer to the Appellants’ case is this—that they invite your Lordships to look, not at the whole get-up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the Appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up, and not only that part of it in which the resemblances are to be found, the whole get-up does not deceive.”” “The question that we have to determine is whether in selling the bottle a person is likely to be deceived by the resemblance of the one thing to the other; and if a person is so careless that he does not look, and does not, … “treat the label fairly,” but takes the bottle without sufficient consideration and without reading what is written very plainly indeed upon the face of the label on which the trader has placed his own name, then you certainly cannot say he is deceived—in fact he does not care which it is. … The whole question in these cases is whether the thing— taken in its entirety, looking at the whole thing—is such that in the ordinary course of things a person with a reasonable apprehension and with proper eyesight would be deceived.” “It appears to me that the real answer to the Appellants’ case is this—that they invite your Lordships to look, not at the whole get-up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the Appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up, and not only that part of it in which the resemblances are to be found, the whole get-up does not deceive.””
“158. As Jacob J forcefully stated in Hodgkinson & Corby Ltd v Wards Mobility Services Ltd[1994] 1 WLR 1564 at 1569-1570: “I turn to consider the law and begin by identifying what is not the law. There is no tort of copying. There is no tort of taking a man's market or customers. Neither the market nor the customers are the plaintiff's to own. There is no tort of making use of another's goodwill as such. There is no tort of competition. … At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in particular. Over the years passing off has developed from the classic case of the defendant selling his goods as and for those of the plaintiff to cover other kinds of deception, e.g. that the defendant's goods are the same as those of the plaintiff when they are not, e.g. Combe International Ltd v Scholl (UK) Ltd[1980] RPC 1 ; or that the defendant's goods are the same as goods sold by a class of persons of which the plaintiff is a member when they are not, e.g. Erven Warnink Besloten Vennootschap v J. Townend & Sons (Hull) Ltd[1979] AC 29 (the Advocaat case). Never has the tort shown even a slight tendency to stray beyond cases of deception. Were it to do so it would enter the field of honest competition, declared unlawful for some reason other than deceptiveness. Why there should be any such reason I cannot imagine. It would serve only to stifle competition. The foundation of the plaintiff's case here must therefore lie in deception…”
‘The real distinction between mere confusion and deception lies in their causative effects. Mere confusion has no causative effect (other than to confuse lawyers and their clients) whereas, if in answer to the question: “what moves the public to buy?”, the insignia complained of is identified, then it is a case of deception.’
“The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall ‘jury’ assessment involving a combination of all these factors, see ‘GE’ Trade Mark[1973] RPC 297 at page 321. Ultimately the question is one for the court, not for the witnesses. It follows that if the judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one's own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Colman Products Ltd v Borden Inc[1990] RPC 341 ) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more ‘it depends on the evidence.’”
“138. The facts of the case illustrate just what could be involved in some general law of unfair competition. The defendants had copied a special cushion which prevented sores for immobile users. There was no copyright, registered design or patent. So it was said the copying was “unfair”
“But unless that injures the Plaintiff in his property it seems to me to be wholly immaterial in a Court of law. Now, how does it injure his property? What is his property? He has no property in the advertisement. Of course he does not claim it as copyright. He has property in his goods; in any character by which his goods are known; in any distinguishing device or name; and he has the right also to protect his own name. None of these things, as it seems to me, does the Defendant at all offend against, so that the Court can, in any way, reach him.”
“The real question is, whether the Defendants are endeavouring with any probability of success, to pass off their goods as those of the Plaintiffs. That depends upon the evidence, and the evidence is this that, whereas the Plaintiffs had got a trade mark, one part of which consists of the word “Demon”, and whereas the Plaintiffs had put that trade mark on their bats and put the word “Demon” at the top of the rim the Defendants look through the dictionary, see how close they can get to “Demon”, pick out “Demotic”, and put “Demotic” in exactly the same spot where the Plaintiffs put “Demon.”
“179. Nevertheless, the fact that the First Defendant decided to live dangerously is, as it seems to me, still a factor which I am entitled to take into account as confirming my view that the average consumer might well be confused, and indeed to my mind should be taken as having been so: to quote again from the judgment of Robert Walker J (as he then was) in United Biscuits (UK) Ltd v Asda Stores Ltd[1997] RPC 513 at 531: “I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, they were taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard.”
“Without wishing to labour the point unduly, we again point out that where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse ...”
“But if the intention to deceive is found, it will be readily inferred that deception will result. Who knows better than the trader the mysteries of his trade?”
“Evidence of actual confusion is always relevant and may be decisive. Absence of evidence may often be readily explained and is rarely decisive. Its weight is a matter for the judge.”
“…the concepts, style and get-up of its business, fashion, collections, garment design, packaging, marketing, publicity, website and social media, including the design and high quality of its collections and garments, the highly distinctive style of its packaging, marketing and websites, including the design and layout, look and feel, concept, style, presentation and content of its website, the use of social media and the customer experience and customer service on its website and stores…”
“The Defendants have adopted the same or strikingly similar concepts, style and get-up for their business, fashion, collections, garment designs, packaging, marketing, publicity, website design and social media as [House of CB]. The advertisement, offer for sale and sale by the Defendants of “look-alike” fashion, collections, garments and accessories, in “look-alike” packaging on a “look-alike” website and the wholesale copying and/or imitation of [House of CB’s] Business and Marketing Style and Get-Up constitutes a misrepresentation by the Defendants…”
“…you want the customer to feel as if they are buying into a certain kind of lifestyle and not just a product. This is highly common in the women’s online fashion industry.”
“Our garments are also very tight-fitting and are designed to stand out and get our customers seen: typically they will show off either the wearer’s cleavage or their legs, and are recognisable as Oh Polly garments for the sexy design, “bodycon” fit and high-quality material.”
“Girl I got a dress from Oh Polly for$63 that was$180 on House of CB…” “Seeing as OhPolly copy all of HouseOfCb designs, are their clothes good quality?” “Wish @ohpoly would put as much effort into makin their website work properly as it didn’t take people’s money & cancel orders, as it did into copying designs from House of CB”. “Oh Polly … just COMPLETELY copy House of CB designs…” “Oh Polly just rip off House of CB designs…” “Oh Polly fully copying House of CB designs”
“…every brand has their own unique style based on their use of makeup and hair styles, shooting on location or in a studio and the sort of garment the model is wearing.” “What makes a difference is what you do with the model, the location, the hair and make-up when you’re shooting.”
“We are a very similar style to House of CB but our prices are highstreet prices. We want our pictures to emulate the style that House of CB present”. “If you are familiar with the likes of House of CB then that is the style of image we are looking for.”
“Second problem is poses, apart from 1 or 2 items, the majority of poses are the same. … I’ve even sent you a print out of different poses and asked that PLT/Missguided/House of CB be monitored so you can see exactly what I want (from the latter, house of CB/Oh Polly) and what I don’t want from the former (PLT/Missguided).”
“The Stassie video should be fast, sexy and fierce. Lots of movements – lots of sharp catwalk style walk ups, dances, cute movements. The House of CB I passed over does this really well and is unique and more “out there” than the standard boring posts/angles.”
“oh Polly wanna be house of cb so bad lol down to the same damn models” “I find it weird how oh polly use the same models as house of CB and create very similar social media content.” “Oh and forgot to mention [@ohpolly copies] the shoot locations, models, and the overall content … it’s so sickening.”
“How have you not sued yet? @HouseofCB. Girls did you also realise even the logo and colours are similar. Even the packaging. @ohpolly @ohpollyhelp you should be embarrassed.”
“Out of curiosity, are you guys affiliated/connected with Oh Poly in any way? It baffles me that they steal every single design after you guys release collections. how do they get away with it!?” “oh polly is owned by house of cb ” “Is Oh Polly and House of CB the same thing?” “Are “ohpolly and “HouseOfCB the same company?” “Is oh Polly the same as house of CB?!” “Hey quick question…Is “Oh Polly” one of your companies? The reason I’m asking is because I’m a bit confused…I stumbled across their Instagram page and they seem to have similar models, similar sort of styles etc…” “Do you also own “OhPolly”? they have a very similar style to House of CB” “see a lot of similarities between you & “ohpolly” (models, style, insta) are you sister cos?” “Hi. Is Oh Polly part of House of CB company? I’ve seen many of their design are very similar to yours” “I even thought maybe House of CB bought them, that’s how similar they are lool, I’m not complaining though”
“Although proof of damage is an essential requirement of passing off cases, it will generally be presumed where a misrepresentation leading to a likelihood of deception has been established, since such deception will be likely to lead to loss of sales and/or more general damage to the exclusivity of the Claimant's unregistered mark. Mr Aikens accepted that if there was a misrepresentation in the present case, then he had no separate case on damage. I hold that damage is inevitable, at least in the sense recognised in Sir Robert McAlpine v Alfred McAlpine[2004] RPC 36 at 49 (the 'blurring, diminishing or erosion' of the distinctiveness of the mark).”
“(3) The court may in an action for infringement of design right, having regard to all the circumstances and in particular to- (a) the flagrancy of the infringement; and (b) any benefit accruing to the defendant by reason of the infringement, award such additional damages as the justice of the case may require.”
“Where an action for infringement or for threatened infringement of a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures: … (d) any order imposing other sanctions appropriate under the circumstance which are provided by the law of the Member state in which the acts of infringement or threatened infringement are committed …”