Original Beauty Technology Company Ltd v G4K Fashion Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 09 July 2021 |
| Neutral Citation | [2021] EWHC 1848 (Ch) |
| Docket Number | Case No. IL-2018-000105 |
| Court | Chancery Division |
[2021] EWHC 1848 (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 High Court Judge)
Case No. IL-2018-000105
Ms Anna Edwards-Stuart and David Ivison (instructed by Mono Law Limited) for the First and Second Claimants
The Third Claimant was not represented
Mr Ben Longstaff (instructed by Fieldfisher) for the Defendants
Hearing date: 24 June 2021
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 High Court Judge):
On 24 June 2021 I allowed the First and Second Claimants' application to rely on a Supplemental Statement of Case which amended their pleadings in a number of ways. That application was opposed by the Defendants and, at their request, I set out below the reasons for my decision.
Background
The First and Second Claimants sell bandage and bodycon garments under the brand House of CB. The Defendants also sell such garments, under the brand Oh Polly. The Claimants sued the Defendants in June 2018 for unregistered design right infringement and passing off.
Following a trial over eight days (the Main Trial), I gave judgment on 24 February 2021 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 said were infringed by the Defendants. I dismissed the passing off claim. That judgment (the Main Judgment) can be found at [2021] EWHC 294 (Ch). I adopted the parties' nomenclature for the garments, with the Claimants' garments given the letter C and a number (eg, C37) and the Defendants' allegedly infringing garments given the letter D and the same number (eg D37). I found that seven of the Selected Garments infringed both UKUDR and CUDR and 13 infringed neither right. Both UKUDR and CUDR require copying: in each case where I found copying, an image of the Claimants' pleaded garment appeared on the Defendants' Trello card for its garment. As I explained in the Main Judgment, Trello is the Defendants' internal database, which records the design history of each of their garments. For example, in relation to garment D2, I found at paragraph 147 of the Main Judgment:
“I have no hesitation in finding that D2 was copied from C2. As is clear from her email and the Trello records, Ms Henderson downloaded an image of C2 from YouTube, and instructed that it be sent to the factory to be reproduced.”
At paragraph 513 of the Main Judgment, I wrote:
“As noted above, the Claimants' claim of UKUDR and CUDR infringement in relation to a further 71 garments was stayed as part of the streamlining ordered by Deputy Master Nurse. It is my fervent hope that there are sufficient findings in this judgment to enable the parties to agree how the claims in relation to those 71 garments should be concluded. As became apparent during the course of the trial, the 20 garments in issue before me fell into three “buckets”: (1) where referencing was admitted, and the Claimants' garment was uploaded to Trello at the beginning of the production process; (2) where referencing was admitted, but the Claimants' garment was not uploaded to Trello until part way into the design process; and (3) where no referencing was admitted. I add to that garment D35, where copying was admitted. Whilst there were some minor variations within those buckets leading to slightly different outcomes (usually to do with colourways), I have found that, on the whole, the garments in bucket (1) infringe, but that those in buckets (2) and (3) do not. It seems to me that that ought to provide good guidance for dealing with the remaining 71 designs without the need for further intervention by the Court. Whilst not deciding the point, it seems to me at this stage that a further trial on liability in relation to those designs would likely be disproportionate. If those 71 garments cannot be resolved between the parties, the matter should be listed before me for directions.”
A form of order hearing took place on 1 April 2021, where I made orders for dealing with the remaining 71 garments which have not yet been adjudicated (the Stayed Claims). 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. An issue arose after the form of order hearing 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). By the time of the form of order hearing, the Third Claimant was no longer actively involved in the proceedings.
Also on 1 April 2021, I listed the matter for trial on 6 August 2021 to deal with any of the Stayed Claims that were still pressed and which the parties were not able to resolve. To assist in reaching that position, I made the following orders:
i) For the Defendants to disclose the Trello cards relating to their garments the subject of the Stayed Claims, and file and serve a Re-Re-Amended Defence to address only the Stayed Claims;
ii) Having reviewed the Trello cards, for the First and Second Claimants to set out which claims they would pursue; and
iii) For the Defendants then to set out any further admissions of liability, and which issues remained in dispute.
Consequently, since the form of order hearing on 1 April 2021, the parties have taken the following steps in relation to the Stayed Claims:
i) The Defendants have disclosed for the first time the Trello cards for each of their garments affected by the Stayed Claims;
ii) The Defendants have admitted infringement in relation to two further garments (referred to as D85 and D87);
iii) The Defendants have admitted copying in relation to 16 further garments;
iv) The Defendants have admitted subsistence of CUDR in respect of all but eight of the garments in the Stayed Claims; and
v) The Defendants have admitted subsistence of UKUDR in respect of all but six of the garments in the Stayed Claims.
The First and Second Claimants notified the Defendants on 13 May 2021 that they would pursue only 36 of the Stayed Claims. However, on 10 June 2021, the First and Second Claimants, through their solicitors, wrote to the Defendants' solicitors enclosing a draft Supplemental Statement of Case. This document maintains fewer and different claims to the 36 set out in the notice sent on 13 May 2021 and approaches the Stayed Claims as follows:
i) Four garments remain claimed as pleaded – D38, D54, D57 and D88. Together with the two garments which have now been admitted to infringe (D85 and D87), these six claims were described by the parties as the Category A claims. The Defendants do not object to this aspect of the Supplemental Statement of Case and so I need say nothing more about it;
ii) There is a set of amended claims referred to as Category B where the First and Second Claimants no longer assert rights in the whole of their garments, but only in a part of each garment. These relate to D1, D27 and D57; and
iii) There is a further set of amended claims referred to as Category C, where the First and Second Claimants maintain that the Defendants' garments D6, D15, D41, D42 and D48 infringe, but instead of infringing the earlier claimed garments C6, C15, C41, C42 and C48, the five garments are now said to infringe different garments of the First and Second Claimants, namely C107, C110, C108, C109 and C61 (respectively). As might be apparent from the numbering, C107, C108, C109 and C110 are garments new to the proceedings. C61 was already in the proceedings, but is now invoked against D48. For each of C61, C108, C109 and C110, only a part of the Claimants' garment is relied on.
The Defendants now admit copying in relation to all of the Category A and the Category B garments. The Defendants have not yet had an opportunity to admit copying in relation to the Category C garments, but the First and Second Claimants submitted before me that the Category C claims were identified because the Claimants' garments were on the Defendants' Trello cards. As set out above, this was also the case for all the infringements I found in the Main Judgment.
For the Category A garments, only the following issues remain to be determined on 6 August 2021:
i) Are the designs of C38 and C88 commonplace?
ii) Are D38, D54, D57 and D88 made exactly or substantially to the Claimants' designs and does D54 create the same overall impression on the informed user as the Claimants' design?
In relation to the Category B and the Category C claims, the Defendants do not suggest that the First and Second Claimants are not entitled to bring them – however, they submitted before me that these claims should be filed as fresh proceedings to be determined in due course, rather than to become part of these proceedings.
Is this a late (or very late) amendment?
The Defendants described the application as a late amendment and also as a very late...
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...Selected Garments, I heard a CMC on 24 June 2021. I allowed the Claimants to amend their pleadings for the reasons set out at [2021] EWHC 1848 (Ch). Following these amendments, the Defendants then admitted that a number of the further pleaded garments 7 The Claimants' Points of Claim in th......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...of this case”. Background 3 The background to this case is set out in the judgment I gave on 9 July 2021, which can be found at [2021] EWHC 1848 (Ch). Relevantly for today's purposes, it is sufficient to note the following. After a trial over eight days, I gave judgment on 24 February 2021......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...Selected Garments, I heard a CMC on 24 June 2021. I allowed the Claimants to amend their pleadings for the reasons set out at [2021] EWHC 1848 (Ch). 11 In the end, the Claimants' Points of Claim were served on 20 August 2021. Points of Defence were served on 7 September 2021. As mentioned ......
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Original Beauty Technology Company Ltd v G4K Fashion Ltd
...Selected Garments, I heard a CMC on 24 June 2021. I allowed the Claimants to amend their pleadings for the reasons set out at [2021] EWHC 1848 (Ch). I refused permission to appeal, and permission was not requested from the Court of 8 In the end, the additional trial listed for 6 August 202......