Original Beauty Technology Company Ltd v G4K Fashion Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 24 February 2021 |
| Neutral Citation | [2021] EWHC 294 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No. IL-2018-000105 |
| Date | 24 February 2021 |
[2021] EWHC 294 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Royal Courts of Justice,
Rolls Building Fetter Lane, London, EC4A 1NL
David Stone
(sitting as a Deputy Judge of the High Court)
Case No. IL-2018-000105
Ms Anna Edwards-Stuart and David Ivison (instructed by Mono Law Limited) for the Claimants
Mr Chris Aikens (instructed by Fieldfisher) for the Defendants
Hearing dates: 30 November and 1, 2, 3, 4, 9, 10 and 21 December 2020
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| The Parties | 4 |
| Procedural History | 5 |
| Witnesses | 8 |
| Connor Walker | 8 |
| Joanna Richards | 8 |
| Georgina Douek | 9 |
| Kirsty Walker | 9 |
| Claire Henderson | 9 |
| The Dropbox Exhibits | 10 |
| The Amended Defence | 16 |
| Ms Henderson's Design Process | 16 |
| Michael Branney | 17 |
| Alexandra McShane | 19 |
| Ramsay Bell | 19 |
| Arlene McNab | 19 |
| Amy Johnston | 19 |
| Megan Mitchell | 19 |
| Shauni Connell | 20 |
| Factual Background | 20 |
| Celeb Boutique | 20 |
| House of CB | 21 |
| Mistress Rocks | 21 |
| Polly Couture | 21 |
| Mood Boards | 21 |
| UKUDR – The Law | 23 |
| Originality | 24 |
| Commonplace | 25 |
| Copying | 27 |
| Exactly or Substantially to the Design | 28 |
| UKUDR — Discussion | 30 |
| Ownership | 30 |
| Originality in the Copyright Sense | 30 |
| Commonplace | 32 |
| Copying | 32 |
| Produced Exactly or Substantially to the Design | 34 |
| CUDR – The Law | 34 |
| Individual Character | 36 |
| Copying | 39 |
| CUDR — Discussion | 39 |
| Validity | 39 |
| Ownership | 40 |
| Copying | 41 |
| Infringement | 41 |
| C2/D2 | 41 |
| Validity | 42 |
| Infringement | 42 |
| C3/D3 | 43 |
| Validity | 44 |
| Infringement | 45 |
| C4/D4 | 45 |
| Validity | 46 |
| Infringement | 47 |
| C7/D7 | 48 |
| Validity | 49 |
| Infringement | 49 |
| C9/D9 | 50 |
| Validity | 51 |
| Infringement | 52 |
| C12/D12 | 52 |
| Validity | 53 |
| Infringement | 54 |
| C13/D13 | 55 |
| Validity | 56 |
| Infringement | 57 |
| C17/D17 | 58 |
| Validity | 59 |
| Infringement | 59 |
| C21/D21 | 60 |
| Validity | 61 |
| Infringement | 62 |
| C35/D35 | 63 |
| Validity | 63 |
| Infringement | 64 |
| C47/D47 | 65 |
| Validity | 65 |
| Infringement | 66 |
| C49/D49 | 67 |
| Validity | 68 |
| Infringement | 69 |
| C61/D61 | 69 |
| Validity | 70 |
| Infringement | 70 |
| C63/D63 | 71 |
| Validity | 72 |
| Infringement | 73 |
| C66/D66 | 73 |
| Validity | 74 |
| Infringement | 74 |
| C77/D77 | 75 |
| Validity | 76 |
| Infringement | 76 |
| C81/D81 | 77 |
| Validity | 78 |
| Infringement | 79 |
| C91/D91 | 79 |
| Validity | 80 |
| Infringement | 81 |
| C93/D93 | 82 |
| Validity | 83 |
| Infringement | 83 |
| C102/D102 | 84 |
| Validity | 85 |
| Infringement | 85 |
| Conclusions on UKUDR and CUDR | 86 |
| Passing Off | 87 |
| The Law of Passing Off | 87 |
| Misrepresentation Caused by Get-up | 88 |
| The Need for Deception | 91 |
| Intention to Deceive | 95 |
| Misrepresentation by Trade Connection | 96 |
| Evidence of Actual Confusion | 98 |
| Summary on the Law of Passing off | 98 |
| The Claimants' Pleaded Case on Passing Off | 98 |
| Misrepresentation | 99 |
| Business Model and Focus | 100 |
| Garment Design | 101 |
| Locations, Themes and Styling of Photoshoots | 102 |
| Models | 104 |
| Packaging | 106 |
| Logos | 108 |
| Websites | 109 |
| Branding, Marketing and Strategy | 111 |
| Names of Garments | 112 |
| Jewellery | 113 |
| Misdirected Returns | 113 |
| Timing | 113 |
| Different Customers | 114 |
| Intention to Deceive | 114 |
| Deception | 115 |
| Evidence of Confusion | 115 |
| Damage | 118 |
| Additional Damages | 118 |
| Summary | 120 |
David Stone (sitting as Deputy High Court Judge):
“Bodycon” and “bandage” are two dress styles made popular by celebrities including Jennifer Lopez, Beyoncé and Kim Kardashian. As the name suggests, bodycon dresses emphasise body contours, highlighting the wearer's bust and buttocks, and minimising the waist. Bandage dresses have a similar effect, being made of thick, stretchy material like bandages. The Claimants sell bodycon and bandage garments under the main brand House of CB with a sister brand Mistress Rocks, mostly online, but with some bricks and mortar stores in the United Kingdom and the USA. They say that the Defendants, competitors who sell bodycon and bandage garments online under the brand Oh Polly, have copied 91 of their garment designs, including dresses, jumpsuits and tops, thereby infringing their unregistered design rights under UK and EU law. Further, the Claimants say that the Defendants have copied their business model, social media, marketing, packaging and presentation (including using the same models and the same locations for photoshoots) such that consumers will be deceived into thinking that Oh Polly is a sister brand to House of CB, so as to amount to passing off.
The Defendants deny design infringement, saying that, whilst on some occasions, House of CB garments were “referenced” in the production of Oh Polly garments, they were not copied. Thus, the Court is asked to determine when “referencing” or “inspiration” – a common feature of the fashion industry – ends, and unlawful copying begins. On the passing off case, the Defendants admit that there are some similarities between the two businesses, but say those similarities are common amongst many online fashion businesses, and no consumers have thought or will think that Oh Polly is a sister brand to House of CB.
The Parties
By and large, it is sufficient throughout this judgment to refer to the two sides, without specifying any particular claimant or defendant. For completeness, I note as follows:
i) The First Claimant is a Hong Kong-registered company that operates the websites at www.houseofcb.com and www.mistressrocks.com. In addition to its e-business, the First Claimant has also entered into agreements with franchisees, including the Third Claimant, which sell its garments through bricks and mortar stores.
ii) The Second Claimant is also a Hong Kong-registered company, which owns various registered trade marks (which are not in issue in these proceedings). It licenses those trade marks to the First Claimant.
iii) The Third Claimant operates bricks and mortar retail stores in the United Kingdom, with stores in London, Sheffield and Manchester.
iv) The First Defendant is a company registered in England and Wales – it carried on the Oh Polly business from 2015 until 2017, when the business was transferred to the Fourth Defendant. It now has a share of a warehouse and receives rent from the Fourth Defendant.
v) The Second Defendant, Ms Claire Henderson, is the CEO of the Oh Polly business.
vi) The Third Defendant, Dr Michael Branney, is the Managing Director of the Oh Polly business. Each of Ms Henderson and Dr Branney owns 50% of the First and Fourth Defendants. They have admitted for the purposes of these proceedings that they would be jointly liable with the First and Fourth Defendants for any acts of unregistered design right infringement and/or passing off.
vii) The Fourth Defendant is a company registered in Scotland – it carries on the Oh Polly business today, and has since 2017.
Procedural History
The progress of the matter from complaint to trial was not particularly happy. The First Claimant, through its then solicitors, first wrote to the First and Third Defendants on 19 April 2016, alleging passing off, and that eight Oh Polly garments (sold in various colourways) infringed its UK unregistered design rights ( UKUDR) and Community unregistered design rights ( CUDR). A further letter before action was sent on 25 November 2016, this time relying on 19 designs, none of which had been included in the initial letter. The Defendants did not respond to that letter.
Eighteen months later, on 6 June 2018, a further letter before action was sent, this time to the Second, Third and Fourth Defendants, listing 87 garments that were said to infringe the First Claimant's UKUDR and CUDR. Only 9 of the 19 garments referred to in the letter of 25 November 2016 were included in this list. Without waiting for a response, the Claim Form in these proceedings was issued the next day.
The Defendants did not respond to the claim, and the Claimants issued an application for judgment in default. After a compromise, directions were agreed for the service of a Defence. There was a hearing on 21 November 2018 before Zacaroli J, who made orders to keep confidential the names of the designers of garments on which the Claimants relied. The Defence was finally filed on 25 January 2019, some six months following service of the Claim Form. The Claimants filed their Reply some five months later on 14 June 2019, together with draft Amended Particulars of Claim. That latter document abandoned design infringement in relation to 15 of the 87 pleaded garments, and added a further 23 new garments, four of which claims were abandoned prior to the formal application to amend.
The first CCMC took place before Deputy Master Nurse on 15 October 2019, who accepted on case management grounds that the case ought to be “streamlined” and listed this trial. The Amended Defence was served on 31 January 2020. A second CCMC took place before Deputy...
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...out of a total of 91 garments, which rights the Claimants said were infringed by the Defendants. That judgment can be found at [2021] EWHC 294 (Ch) (the Main Judgment). I found that seven of the Selected Garments infringed both UKUDR and CUDR, and that 13 infringed neither right. I dismiss......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...UKUDR and CUDR and 13 do not. I also dismissed the Claimants' passing off action. That judgment (the Main Judgment) can be found at [2021] EWHC 294 (Ch). 3 A form of order hearing took place on 1 April 2021, when I made orders for dealing with the remaining 71 garments which have not yet b......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...out of a total of 91 garments, which rights the Claimants said were infringed by the Defendants. That judgment can be found at [2021] EWHC 294 (Ch). I found that seven of the Selected Garments infringed both UKUDR and CUDR and 13 infringed neither right. I dismissed the passing off claim. ......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...UKUDR and CUDR and 13 do not. I also dismissed the Claimants' passing off action. That judgment (the Main Judgment) can be found at [2021] EWHC 294 (Ch). 2 The parties' representatives were unable to agree a form of order, and were unable to accommodate a form of order hearing until 1 Apri......