Original Beauty Technology Company Ltd v G4K Fashion Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 28 April 2021 |
| Neutral Citation | [2021] EWHC 953 (Ch) |
| Date | 28 April 2021 |
| Docket Number | CLAIM NO.IL-2018-000105 |
| Court | Chancery Division |
[2021] EWHC 953 (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)
CLAIM NO.IL-2018-000105
Ms Anna Edwards-Stuart and Mr David Ivison (instructed by Mono Law Limited) for the First and Second Claimants
The Third Claimants were not represented
Mr Chris Aikens (instructed by Fieldfisher) for the Defendants
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.
David Stone (sitting as a Deputy Judge of the High Court):
On 24 February 2021, I gave judgment in these proceedings in relation to the alleged infringement of UK unregistered design rights (UKUDR) and Community unregistered design rights (CUDR) in 20 selected garments (the Selected Garments) out of a total of 91 garments which the Claimants say are infringed by the Defendants. I found that seven of the Selected Garments infringe both 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).
The parties' representatives were unable to agree a form of order, and were unable to accommodate a form of order hearing until 1 April 2021. On that day, I made orders for dealing with the remaining 71 garments (the Remaining Garments) which have not yet been adjudicated, and for an account of profits/damages enquiry. I gave a short ex tempore judgment (which can be found at [2021] EWHC 836 (Ch)) on the Defendants' request for declarations of non-infringement. I reserved costs, with reasons to be given later — those reasons can be found at [2021] EWHC 954 (Ch).
Following the form of order hearing, on 7 April 2021 I received an email from counsel for the Defendants concerning what he described as “some perceived lacunae” in the Main Judgment. These were said to arise because, whilst the Main Judgment dealt with different colourways in relation to some of the infringing garments (D4, D61 and D91), it did not deal with different colourways in relation to D2, D12, D13 and D35.
In response to counsel for the Defendants' email, I received an email from counsel for the First and Second Claimants (the Third Claimant since having gone into liquidation, and not currently being represented before me) which submitted that the additional findings are not necessary. As will be apparent from the Main Judgment, injunctions will be issued to prevent further sales of D2, D12, D13 and D35 in all colourways because, as I have found, they infringe UKUDR in C2, C12, C13 and C35, regardless of colourway.
I agree with this submission. My findings in relation to UKUDR prevent future sales of all colourways of D2, D12, D13 and D35, because UKUDR is not reliant on colour (it relates only to shape and/or configuration of the article). UKUDR is a longer-lasting right than CUDR, and counsel for the Claimants was clear at the Pre-Trial Review that no pan-EU relief was sought in relation to the non-UK aspect of CUDR infringement. The Claimants know that they cannot recover twice in relation to both UKUDR infringement and CUDR infringement in relation to the same garment. Whilst the Defendants' counsel submitted that it matters for the purposes of Island Records v Tring disclosure, without deciding the point I cannot immediately see how that might be the case. Therefore, it seems to me that the Defendants' request does not make any difference ...
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...the various colourways of some of the seven infringing Selected Garments, and I dealt with that in a judgment which can be found at [2021] EWHC 953 (Ch). I dealt with a further issue relating to costs where a Part 36 offer has been made: that judgment can be found at [2021] EWHC 954 (Ch).......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...colourways of some of the infringing garments sold by the Defendants, and I dealt with that in a judgment which can be found at [2021] EWHC 953 (Ch). 4 At the form of order hearing, the First and Second Claimants sought their costs in the sum of £934,943.98, considering themselves to be the......
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Thom Browne Inc. (a company incorporated under the laws of the State of Delaware, USA) v Adidas AG (a company incorporated under the laws of Germany)
...in the same proceedings, the Deputy Judge gave further guidance to help the parties reach agreement on the remaining 71 garments (see [2021] EWHC 953 (Ch), [6]). In a further judgment he explained that an additional trial was listed to address the disputes concerning the remaining 71 garme......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...in relation to the various colourways of some of the infringing garments, and I dealt with that in a judgment which can be found at [2021] EWHC 953 (Ch). I dealt with a further issue relating to costs where a Part 36 offer has been made: that judgment can be found at [2021] EWHC 954 (Ch).......