Success for SuperGroup
Unregistered design infringement claim succeeds
HHJ Hacon has held that by the importation and sale of its ‘Glaisdale’ gilet, H Young (Operation) Limited, trading as Animal, infringed the UK unregistered design right of DKH Retail, subsidiary of Supergroup, in its ‘Academy’ gilet sold under the brand Superdry. Until the expiry of the three year term of protection, the importation and marketing of the ‘Glaisdale’ gilet constituted an infringement of DKH’s unregistered Community designs, showing another success under the more generous ten year term of protection afforded in the UK.
DKH claimed design right in (i) the front closing and hood and collar arrangement in combination, and (ii) the shape and configuration of the hood and collar arrangement in combination, particulars of which can be found in the decision at paragraph 3.
According to s.213 of the Copyright, Designs and Patents Act 1988 (CDPA 1988), a design right subsists in the design of [any aspect of – removed by the Intellectual Property Act 2014] the shape or configuration (whether internal or external) of the whole or part of an article.
Whilst the amendments by the 2014 Act had no bearing on the decision in this instance - DKH did not abstractly define the elements of the design on which it placed reliance - Hacon stated at paragraph 16:
“There is no reason to suppose that Parliament intended the new definition of 'design' in s.213(2) to be identical to that in the Design Regulation and plainly it isn't. However ...there is much to be said for treating [the new definition] as having a meaning as close as possible to "the appearance of the whole or part of a product". One route to such a result would be to interpret the effect of s.1(1) of the 2014 Act as being that it no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant's article, i.e. no more UK unregistered design rights in abstract designs…”
Contrary to claims by H Young, Hacon held that the design was original. Despite being designed in recollection of an earlier Superdry hooded shirt, the designer had expended sufficient skill, effort and aesthetic judgment in the creation of the ‘Academy’ gilet. Neither was the design ‘commonplace’ (see s.213(4) CPDA 1988). Distinguishing the facts of the case from Ocular Sciences (the design of a contact lens was commonplace despite the particular arrangement of commonplace features in the design never having existed before), Hacon stated at paragraph 41:
“It seems to me, though, that this would generally apply only in relation to functional items which are not complex in their design. Certainly it is to be contrasted with the position in relation to articles such as fashion items. There the significant features tend to consist of more than dimensions and often it is the particular arrangement of features that creates an aesthetic effect which, if new, takes the design above the commonplace. In the latter case, for the design to have been commonplace, the arrangement as well as the significant features must have been commonplace.”
H Young also sought to rely on prior art gilets from Abercrombie & Fitch. Both were discounted; the first was admitted to be obscure in the field at the time of creation of the Academy gilet and the second was not shown to be well established as “part of the basic design repertoire of the notional designer at the relevant time” (at paragraph 48).
Following disclosure, H Young conceded that the design of its ‘Glaisdale’ gilet had been with reference to the ‘Academy’ gilet. The Court was not satisfied that H Young had the requisite knowledge before receiving a letter before action from DKH. It is from this point, plus a reasonable period of 14 days for investigation, that H Young had reason to believe that its ‘Glaisdale’ gilets were infringing articles.
Link to Decision