Oh Polly. Oh dear!
The power of unregistered designs and their importance to the fashion industry was demonstrated last month in a High Court judgment against online fashion brand Oh Polly. The designs in question were bodycon and bandage style dresses and were sold on House of CB’s website and in some of their stores. The infringing designs were sold on competing online fashion brand Oh Polly’s website.
Here are two examples of the designs in question, with House of CB’s original designs the left image and Oh Polly’s being the right image:
Infringement of unregistered UK design right arises:
It is possible to avoid infringement if it can be shown that the design is not original, and this is what Oh Polly attempted to show by demonstrating that House of CB’s designs were ‘commonplace’ and lacked originality. However, the Judge found that the earlier garments submitted by Oh Polly were ‘often very different’ to House of CB’s designs (therefore not lacking originality) and Oh Polly’s attempt to invalidate the designs failed.
The Court then considered whether Oh Polly had infringed House of CB’s designs. The Judge concluded that 7 out of 20 Oh Polly garments produced the same overall impression as House of CB’s designs and there was infringement.
An important factor in determining copying was that during the case it emerged that Oh Polly’s CEO and designer (Claire Henderson) had lied in her evidence about her design process for most of the dresses. She had claimed to research trends and create mood boards from thousands of images saved from Oh Polly and third party sites in order to ‘conceptualise the appearance of a design in her head’. The Judge found: ‘her version of her design process a fabrication, concocted to get around the very real difficulty that she took images of the Claimants’ garments (and third party garments) and sent them to the factory to be made up’. The Judge therefore concluded that there had been copying. House of CB also claimed passing off on the basis that Oh Polly had copied their business model, social media, marketing, packaging and presentation including using the same models and the same locations for photoshoots. They argued that this would deceive consumers into thinking that Oh Polly was a sister brand to House of CB amounting to a claim for passing off. However, the court found that there was no substantial evidence that consumers considered there to be a trade connection between the brands. The passing off claim therefore failed, which is not a surprise as it is difficult to succeed in a passing off claim which is based on the claim that concepts or presentation of ideas have been copied.
In addition, the judge awarded additional damages to House of CB because Oh Polly ignored House of CB’s letter claiming infringement and continued to sell the garments on their website. In addition the finding by the judge that the CEO adopted a ‘couldn’t care less about the rights of others’ attitude, contributed to the seriousness of this infringement and persuaded the Judge to award additional damages.
This case is a strong reminder that unregistered design rights can be a strong form of protection for fashion designs. In this case it was successful as House of CB were able to prove copying. However, House of CB’s rights would have been even stronger if they had been registered as it is not necessary to prove copying if the designs are registered.
If the design is therefore a good one please contact one of the Fox Williams fashion design protection team for further details on how to register the design.
If you have any questions about these issues please get in touch with a member of the team or speak with your usual Fox Williams contact.
This fashion alert was written by Daniella Garvey, intellectual property paralegal, Simon Bennett, partner and Stephen Sidkin, partner.
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