G-Star Raw CV (a company incorporated under the laws of the Netherlands) v Rhodi Ltd and Others

JurisdictionEngland & Wales
JudgeRichard Spearman
Judgment Date06 February 2015
Neutral Citation[2015] EWHC 216 (Ch)
CourtChancery Division
Docket NumberClaim No: HC13F01255
Date06 February 2015

[2015] EWHC 216 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

Richard Spearman Q.C.

(sitting as a Deputy Judge of the Chancery Division)

Claim No: HC13F01255

Between:
(1) G-Star Raw CV (a company incorporated under the laws of the Netherlands)
Claimant
and
(1) Rhodi Limited
(2) Rhodi Inc. Imports Limited
(3) Voi Jeans Limited
(4) Rhodi Marketing LLP
(5) Rhodi Suppliers Limited
(6) Rhodi Group Limited
(7) Asif Ibrahim Bux (formerly Patel)
(8) Firoz Ibrahim Bux (formerly Patel)
Defendants

Hugo Cuddigan (instructed by Wragge Lawrence Graham & Co LLP) for the Claimant

Jonathan Hill (instructed by Kuit Steinart Levy LLP) for the Defendants

Hearing dates: 29–31 October, 3 November 2014

Richard Spearman Q.C.:

Introduction

1

The Claimant ("G- Star") carries on business as a designer, manufacturer and distributor of clothing and fashion accessories. In particular, G- Star is one of Europe's leading denim fashion brands and designers of contemporary urban garments.

2

In this action, G- Star, represented by Hugo Cuddigan, seeks injunctions, orders for delivery up, an inquiry as to damages or an account of profits, and other relief in respect of alleged infringement of the United Kingdom unregistered design rights in the design of a pair of contemporary jean trousers known as the "Arc Pant". The Defendants contend that the rights in question entered the licence of right period under section 237 of the Copyright Designs and Patents Act 1988 ("the CDPA") on 1 January 2014, such that no injunction restraining infringement is now available to G- Star on any view.

3

G- Star accepts that all the articles which, as it alleges, infringe its rights were made abroad. However, G- Star contends that they are "infringing articles" pursuant to section 228(3) of the CDPA, on the basis that (a) they have been imported into the United Kingdom and (b) they copy 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 United Kingdom. G- Star's claim against the corporate Defendants is accordingly for secondary infringement pursuant to section 227 of the CDPA. G- Star also has a claim against the individual Defendants on the basis that they entered into a common design with some or all of the corporate Defendants to do the acts which, on G- Star's case, involved infringement of its rights.

4

The claim relates to 9 separate styles of jeans marketed under the "Voi" brand, called "Bowral", "Capel", "Carton", "Ibaraki", "Jurien", "Maleny", "Vale", "Vobar" and "Winton" ("the Rhodi Styles"). The Defendants, represented by Jonathan Hill, take issue with G- Star's case root and branch. However, their main line of defence is that (a) none of the Rhodi Styles are substantially the same as the Arc Pant, and no constituent part of them is substantially the same as its counterpart in which G- Star claims that unregistered design right subsists and (b) in any event, they did not copy the Arc Pant.

5

According to a witness statement made by their solicitor at an earlier stage of these proceedings, the Defendants contend that "their styles were created without reference to the Arc Pant" and "they created their designs in late 2011 onwards by just following general fashion trends in the denim market, and to the extent that their styles have similarities with the Arc Pant this is due to them sharing generic features which had by late 2011 become common". However, it forms no part of their case before me that the designs in issue are commonplace – or, for that matter, that any of them are functional.

6

In many cases there will be an inter-relationship between the issues of whether articles have been made substantially to a design and whether that design has been copied. If there is a substantial similarity between the defendant's design and that of the claimant, that may more readily give rise to an inference of copying; and, conversely, if there has been copying, that may render it more likely that the articles are substantially similar.

7

Confusingly, and contrary to what their names suggest, it appears, and is admitted on the pleadings, that it was the Second Defendant, Rhodi Inc. Imports Limited, that stocked for commercial purposes, offered for sale and put on the market in the United Kingdom the allegedly infringing articles; and that it was the Fifth Defendant, Rhodi Suppliers Limited, that imported those articles and sold them to the Second Defendant.

8

It is denied that any of the other corporate Defendants played any part in the activities of which G- Star complains. There is evidence that the First Defendant, Rhodi Limited, supplied staff who worked on those activities, and that the Fourth Defendant, Rhodi Marketing LLP, operated a website that had some involvement in those activities. I return below to whether these facts provide a basis for establishing liability against them. So far as concerns the Third Defendant, Voi Jeans Limited, and the Sixth Defendant, Rhodi Group Limited, however, as Mr Cuddigan effectively conceded in closing, in my judgment G- Star has no real case at all, and I say little more about them.

Previous proceedings

9

This is not the first instance of litigation between these parties, or some of them. Following initial test sales to the public in June 2008, the Arc Pant was fully launched at an industry show in Berlin in July 2010, and G- Star went on to achieve sales of more than 2 million items by the end of 2012. In January 2010, G- Star became aware of a "Voi" style called "Mavrick", which was described in a G- Star internal email dated 19 January 2010 as being "the most blatant copy [of the Arc Pant] so far. Almost everything is the same, shape of leg, shape of front pocket, shape of back pocket".

10

G- Star and others then brought proceedings ("the 2010 proceedings") against (among others) all the Defendants to the present action except Voi Jeans Limited and Rhodi Marketing LLP ("the 2010 Defendants"), alleging infringement of design rights in the Arc Pant and other G- Star styles in relation to various "Voi" styles of jeans including "Iceman" and "Mavrick".

11

The 2010 proceedings were compromised by a Consent Order dated 15 July 2011. The terms of settlement are confidential, but included provision for the 2010 Defendants to procure a bank guarantee to which G- Star could have recourse in the event that G- Star provided satisfactory evidence that G- Star's rights had subsequently been infringed by the 2010 Defendants. On 14 February 2013, G- Star made a claim under that guarantee, which the bank met using monies that it recouped from Rhodi Group Limited.

12

In the present action, both sides place reliance on these events.

13

On the one hand, G- Star relies upon them (a) as a step in the story of the Defendants' alleged copying of the Arc Pant, and (b) as relevant to its case that (as it needs to establish to make good a claim of secondary infringement) the Defendants knew or had reason to believe that the articles complained of in this action were "infringing articles". In addition, by the present claim G- Star seeks to make good its contention that infringement did indeed occur subsequent to the settlement of the 2010 proceedings.

14

On the other hand, the Defendants contend that there was no such subsequent infringement, and, accordingly, that G- Star was not entitled to payment under the above bank guarantee. The Defendants therefore counterclaim for (a) a declaration of non-infringement and (b) repayment to Rhodi Group Limited of the sum which G- Star obtained under that bank guarantee. The Defendants also argue that this history supports the improbability that they would have copied the Arc Pant as alleged in the present action. They say, in essence, (i) "once bitten, twice shy", and (ii) that it would have been foolhardy for them to do this, because it would have been obvious to them that G- Star would be monitoring their compliance with the above settlement agreement.

15

The genesis of the present action occurred in December 2012, when G- Star learned of the existence of the "Jurien" style, which it regarded as an infringement of its rights.

16

By letter dated 12 December 2012, G- Star's solicitors objected to the "Jurien" style, and complained that the terms of settlement of the 2010 proceedings had been breached: "… the JURIEN style substantially reproduces the majority of the prominent features of two particular Voi styles complained of in [the 2010 proceedings] … Our client is very surprised that you have chosen to reproduce our client's design again, simply using a new style name, in such a flagrant manner. In correspondence and discussions during those earlier proceedings our client made it abundantly clear that such infringing activity by your client would not be tolerated, and would be the subject of immediate action if it occurred". G- Star subsequently objected to other "Voi" styles.

The parameters of the design claim

17

The thrust of G- Star's case as to the origin, existence and nature of the rights in issue is paraphrased in the narrative contained in the 2011 edition of the Denim Bible, Jeans Encyclopaedia III: "In 1996, G- Star pioneered the introduction of the first sculpted, 3-D denim with the iconic G- Star Elwood … created by G- Star's head designer Pierre Morisset … Gradually it became a worldwide success and today the G- Star Elwood is widely adopted … With this design, G- Star mapped out an altogether new way of thinking about denim. The latest evolution of 3-D denim design comes with the Arc Pant, which was first introduced in 2009. This highly architectural cut features a low crotch and straight hip, with an asymmetric tapered leg...

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