Freddy SpA v HUGZ Clothing Ltd

JurisdictionEngland & Wales
JudgeDavid Stone
Judgment Date19 November 2020
Neutral Citation[2020] EWHC 3032 (IPEC)
CourtIntellectual Property Enterprise Court
Docket NumberClaim No: IP-2019-000104
Date19 November 2020

[2020] EWHC 3032 (IPEC)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES

INTELLECTUAL PROPERTY LIST (ChD)

INTELLECTUAL PROPERTY ENTERPRISE COURT

7 Rolls Building

Fetter Lane, London EC4A 1NL

Before:

David Stone (sitting as a Deputy Judge of the Chancery Division)

Claim No: IP-2019-000104

Between:
Freddy SpA
Claimant
and
(1) HUGZ Clothing Limited
(2) CC Liverpool Limited
(3) Christopher Kavanagh
Defendants

Mr Hugo Cuddigan QC (instructed by Gowling WLG) for the Claimant

The Defendants did not appear and were not represented

Hearing date: 5 October 2020 via Skype for Business

Judgment Approved by the court for handing down (subject to editorial corrections)

David Stone (sitting as Deputy Judge of the Chancery Division):

1

“Body-enhancing” jeans are part of an expanding area of fashion known as shapewear. They can give the appearance of slimmer hips, whilst simultaneously lifting and separating the buttocks. Whilst body-enhancing undergarments have been popular for centuries, the emergence of shapewear as outer-garments is recent. The Claimant, Freddy SpA, introduced its WR.UP branded jeans in 2012. It says that these were a dramatic departure from what was previously available on the market, attracting significant consumer attention and commercial success. The Defendants, HUGZ Clothing Limited, CC Liverpool Limited and Mr Christopher Kavanagh, have admitted copying the WR.UP jeans and marketing the copies as their own HUGZ branded jeans. Having settled the Claimant's initial complaint in a settlement agreement dated 3 April 2019 (the Settlement Agreement), the Defendants then launched a second version of the HUGZ jeans. In doing so, the Claimant says the Defendants:

i) breached the Settlement Agreement;

ii) infringed the Claimant's European Patent no (UK) 2 666 377 B1 titled “pants, in particular for shaping the female buttocks and hips” (the Patent);

iii) infringed various UK unregistered design rights under the Copyright Designs and Patents Act 1988 (the CDPA); and

iv) engaged in unlawful passing off.

Procedural History

2

The Claimant complained about the first iteration of the HUGZ jeans (the First HUGZ Jeans) in late 2018. The Settlement Agreement was concluded on 3 April 2019, with the Third Defendant, who is a director of the First and Second Defendants, signing on behalf of both corporate entities, as well as himself. Very shortly thereafter, the Defendants launched the second iteration of the HUGZ jeans (the Second HUGZ Jeans): a trap purchase was made by the Claimant's solicitors on 2 May 2019.

3

The Claim Form was filed on 12 July 2019, followed by Particulars of Claim. The Defendants filed a Defence and Counterclaim, which was later amended following amendments to the Particulars of Claim allowed by order of HHJ Hacon made on 19 December 2019. His Honour also made various orders for the filing of fact and expert evidence, and listed the trial for three days from 5 October 2020. Three days is an unusually long listing for the IPEC – it was done in this case because of the number and complexity of the issues to be determined. Throughout this time, the Defendants were assisted by specialist intellectual property solicitors and counsel.

4

On 5 June 2020, the Defendants' solicitors came off the record. Since that time, the Defendants have played no active part in the proceedings. They filed neither fact evidence nor expert evidence. Therefore, again unusually for the IPEC, the Claimant (rightly) listed the matter for a Pre-Trial Review before me on 7 September 2020 to determine whether the Defendants intended to take part in the trial, and to ensure that the trial could take place efficiently and without wasting the parties' and the court's resources. The Defendants did not attend the Pre-Trial Review, and were not represented. At that hearing, I made orders relating to the management of the case, including shortening the listing of the trial from three days to one day, and excusing the Claimant's witnesses from attendance. I gave the Defendants permission to apply prior to 4pm on 11 October 2020 to vary any of the orders I made. They did not do so.

5

Following the removal of the Defendants' former solicitors from the record, the Claimant and the Court had been communicating with the Defendants through an email address for the Third Defendant, Mr Kavanagh. On the business day before the trial (2 October 2020), Mr Kavanagh, from that email address, contacted the Court in relation to the Claimant's request to file its skeleton argument one hour later than had been ordered, because of technical difficulties. That is the only correspondence received from the Defendants for some months.

6

I have confirmed with the registry that Mr Kavanagh was made aware of the details to access the trial via Skype for Business. I am therefore confident that he was aware of the date of the trial, was aware of how to access the trial, and was aware of how to contact the court again, should he have wished to do so. In the end, the Defendants did not attend the trial and were not represented.

7

No application was made under CPR 39.3(1)(c) to strike out the Amended Defence: having got this far, Mr Hugo Cuddigan QC, who appeared for the Claimant, submitted that a fully reasoned judgment was of value to the Claimant in enforcing the Patent in the UK and in other jurisdictions. I was, however, asked to strike out the Amended Defence were I to find for the Defendants on liability: as will be apparent from what follows, it is not necessary for me to decide the Claimant's contingent application. I add for completeness, that had I been asked to do so, I would have struck out the Amended Defence on the basis of the Defendants' non-attendance: see Scott Tuynan v J4K Sports Limited (in creditors' voluntary liquidation) [2018] EWHC 3519 (Ch). I was, however, asked to strike out the Defendants' counterclaim (i) for invalidity of the Patent and (ii) for a declaration that the letters sent by the Claimant to various of the Defendants' distributors constituted unjustified threats of patent and/or unregistered design right infringement proceedings. I am satisfied that the test set out in CPR 39.3(1)(c) is made out. I strike out the Defendants' counterclaim.

8

The Court was therefore in the unusual position of having uncontested fact and expert evidence from the Claimant, and nothing from the Defendants other than its Amended Defence, which, as is usual in IPEC proceedings, and by virtue of the order of HHJ Hacon of 19 December 2020, stands as evidence in chief. The Amended Defence was supported by a statement of truth and signed by Mr Kavanagh.

9

I have set out the background to the trial in some detail. The lack of engagement from the Defendants since June means that, unusually, issues between the parties have not narrowed before trial. I must therefore determine all the issues in the case, and can do so briefly in some cases. The list of issues set out in a Schedule to HHJ Hacon's order of 19 December 2020 therefore remains apposite, with the exception of the threats counterclaim, which I have struck out:

Patent

(1) Whether claims 1, 2 and 5 of the Patent are invalid, as alleged by the Defendants.

(2) Whether the Second HUGZ Jeans fall within the scope of protection associated with claims 1, 2 and 5 of the Patent.

Unregistered Designs

(3) Whether and to what extent design right subsists in the WR.UP Designs (as defined – see below).

(4) Whether the WR.UP Designs are commonplace.

(5) Whether any of the WR.UP Designs that are subsisting are owned by the Claimant.

(6) Whether the Second HUGZ Jeans are articles which have been made exactly or substantially to each of the WR.UP Designs.

Passing Off

(7) Whether it is customary and conventional for women's jeans to bear branding elements on their rear pockets.

(8) Whether the WR.UP jeans have been promoted by reference to the Freddy Get-Up (as defined – see below).

(9) Whether the Claimant owns goodwill in the Freddy Get-Up.

(10) Whether the Second HUGZ Jeans have been promoted by reference to the features set out in paragraph 39 of the Amended Particulars of Claim (see below).

(11) Whether it is likely that the Defendants have misrepresented that the Second HUGZ Jeans are connected in the course of trade with the Claimant.

(12) If so, whether it is likely that such misrepresentation has caused the Claimant damage.

Breach of Settlement Agreement

(13) Whether the Defendants are in breach of the Settlement Agreement as a result of their dealing in products that would have been an infringement of the unregistered design rights that had been identified in the letters of 9 November 2018, 20 December 2018 and 31 January 2019 (the Letter Designs) [or the design set out in the Settlement Agreement (the SA Design)].

10

I was informed that issue 13 as set out in HHJ Hacon's order does not include a reference to the Patent because it was agreed between the parties that if the Patent was found to be not invalid and infringed, the Defendants were in breach of the Settlement Agreement. However, it seems to me that issue 13 ought to have included a reference to infringement of the design set out in the Settlement Agreement. I will return to this below.

11

Counsel for the Claimant submitted that the circumstances of the case mandated a particular approach to the Claimant's evidence. He submitted that the Defendants had (a) not submitted any evidence of their own challenging the Claimant's fact or expert evidence; (b) not attended the Pre-Trial Review, despite being on notice of it; (c) not challenged the order excusing the Claimant's witnesses from the trial; and (d) not...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT