Legal Update - Infringement of Design Rights

Intellectual Property Rights – Design Rights in the Fashion Industry – Infringement of Design Rights

In the case of DKH Retail Ltd v H. Young (Operations) Ltd [2014], the court held that H. Young (Operations) Ltd 's (“H Young”) gilet infringed the design rights of DKH Retail Ltd (“DKH”) as the design of the gilet was not commonplace, lacked originality and individual characters.
 

Background

DKH is a manufacturer of clothing and it manufactured and sold gilets in the UK.  DKH claimed that it had unregistered design rights and unregistered European Community design rights in and to the two designs for the 'Academy' design of gilet, in particular:

• The design of the front closing, hood and collar arrangement in combination (the first design); and
• The shape and configuration of the hood and collar arrangement (the second design).

H Young imported and sold similar design of gilets to that of DKH. DKH brought proceedings against infringement of design rights as it imported and sold the 'Glaisdale' gilet design which was similar to that of DKH’s designs. DKH submitted that the 'Glaisdale' gilet infringed its designs in connection with the Academy gilet.

In its defence, H Young argued that:

• DKH's designs lacked originality;
• DKH's designs incorporated features that were commonplace and had been commonplace in the relevant field at the time of their creation; and
• DKH's designs lacked individual character as European Community designs.

Decision

The court took into account the effect on the informed user of the Academy gilet's design and held that:

• On the evidence, neither of DKH's designs lacked originality.
• Neither of DKH's designs had been commonplace in the relevant design field at the time of their creation.
• The first and second designs, as Community designs, had individual character.

The court applied Dyson Ltd v Qualtex (UK) Ltd [2006] All ER (D) 101 (Mar); Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd [1999] All ER (D) 411 considered; Clinisupplies Ltd v Park [2012] All ER (D) 64 (Dec) considered; Magmatic Ltd v PMS International Ltd [2013] All ER (D) 164 (Jul) considered.

• The overall reaction of the informed user to both the first design and the corresponding part of the Glaisdale gilet would be that they shared the same design concept. In the present case, for that reason, the relevant part of the Glaisdale gilet would not produce on the informed user a different overall impression to that produced by the first design.
• Therefore, the differences between the first design and the relevant part of the Glaisdale gilet would not be enough to dislodge the recognition of their shared design concept.
• Furthermore, the Academy and Glaisdale hoods shared all the features relied on by DKH and were very similar.
• The Glaisdale hood would not produce on the informed user an overall impression different to that produced by the second design.
• H Young's commercial dealings in the Glaisdale gilet infringed the first and second designs as Community designs.
• It had copied parts of the Academy gilet so as to infringe DKH's unregistered rights.

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© RT COOPERS, 2014. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.