In the recent decision of Freddy SpA v Hugz Clothing Limited, Deputy Judge David Stone sitting in the Intellectual Property Enterprise Court handed down a decisive victory for the claimant.
The judge's findings will give hope to brand owners, particularly those in the fashion industry, that there are more tools at their disposal for going after copycat products. The decision was the first in the UK to find post-sale confusion for passing off, and also provided useful clarification on exclusions to design right protection, and patent infringement on both a normal interpretation and the doctrine of equivalents.
We explore the case in detail below, looking at these developments and what they could mean for brand owners, designers and inventors alike. Gowling WLG acted for Freddy, the successful Claimant in this case.
Summary of the case
Freddy SpA is an Italian manufacturer and distributor of a unique pair of trousers designed to lift and separate the buttocks (the "WR.UP pants"). The WR.UP pants are made of a knitted fabric. They feature rubberised support panels and a rubberised waistband inside the trousers. In addition, the WR.UP pants have unique seam shapes, and distinctive branding indicia, specifically created with the intention of highlighting the shape created and catching consumers' eyes.
The WR.UP pants were protected by a patent and UK unregistered design right.
In 2018, it came to Freddy's attention that Hugz Clothing Limited were manufacturing and producing a pair of trousers that were virtually identical to the WR.UP pants. After some discussion, the parties entered into a settlement agreement, prohibiting the sale of the Hugz trousers. Hugz were granted a brief sell through period. On expiry of the sell through period, Hugz released a second version of their trousers. This second version of the trousers featured a single diagonal belt loop (rather than two crossed belt loops), and the curved seam around the bottom did not quite join the central back seam. Instead this curved seam stopped just short of the central seam and was finished in the seam.
Freddy claimed infringement of its patent, infringement of its UK unregistered design rights, passing off and breach of the settlement agreement. Hugz denied infringement, challenged the validity of the patent and UK unregistered designs, and counterclaimed for groundless threats.
In its claim for passing off, Freddy relied on a combination of its brand elements. These elements included a cameo-inspired badge pinned to the rear false pocket of the WR.UP pants, the curved seams of the false pockets, a diagonal belt loop and a scalloped rear yoke (together the "Freddy get-up").
Freddy claimed that all of the elements of the Freddy get-up were present on the Hugz product.
Hugz denied passing off, stating that their jeans were only sold under the Hugz name, and that there could therefore be no misrepresentation to consumers. Conversely, Hugz argued, the WR.UP pants were clearly sold under the Freddy name and the WR.UP brand, neither of which were used by Hugz to market their product.
Nevertheless, Freddy claimed that Hugz's use of a similar get-up amounted to passing off for two reasons. First, Hugz wanted consumers to think that the two brands are connected in some way. Second, and in the alternative, even where a consumer knows that Hugz's product is not the Freddy product, they want other consumers to believe, when they see the product, that the Hugz product is associated with Freddy and/ or the WR.UP pants. Essentially, Freddy argued, the buyer of the Hugz product wants others to think they are wearing the Freddy product.
Deputy Judge Stone found passing off on both in the conventional sense and on the basis of post-sale confusion. These findings present interesting developments for brand owners.
Conventional passing off
The Hugz jeans were not sold under the Freddy name or the WR.UP brand. Arguably, this might have been sufficient to mitigate the risk of deception to the consumer, as the main brand would rebut any suggestion of misrepresentation. However, the judge considered that the goodwill in the Freddy get-up was particularly strong, and that consumers would come to recognise this as an indication of the origin of the products.
The judge said that the Hugz jeans were "an obvious rip-off" of the WR.UP pants. This may have been persuasive in helping him to find passing off. Nevertheless, it was clear from the similarities between the get-up for both the WR.UP pants and the Hugz jeans that Hugz had intended to misrepresent that it was in some way connected to Freddy.
This finding serves as a helpful reminder that brand protection and get-up goes beyond just names and logos, even for passing off. Freddy had invested in teaching consumers about its branding elements and ensuring that the features of the Freddy get-up were instantly recognisable from a distance. Brand owners should consider the distinctive elements of their products and take steps to draw these to the eye of the consumer prior to any purchase. This is, of course, more difficult for products that have to be sold in packaging, although this can be redressed through online presentation and sale.
In addition to conventional passing off, the judge also found that there was post-sale passing off, i.e. that consumers can continue to be deceived as to the origin of the product after purchase.
Historically, post-sale confusion has not been considered sufficient to amount to evidence of misrepresentation. In Bostik v Sellotape  RPC 556, it was held that Bostik could not rely on the blue colour of their Blu-Tac as evidence of passing off. In that case, the judge held that the customer had not been deceived as to the origin of the product at the point of sale – Blu-Tac was clearly sold in Blu-Tac branded packaging, and the Sellotape product was sold under its own brand.
In Arsenal v Reed  EWHC 440, Laddie J held that where consumers had knowingly purchased unofficial merchandise, there could not be passing off. The clear disclaimers that the product was not official, and the different price, were sufficient to dispel any claims of misrepresentation. Although there was an indication from the Court of Appeal in the Arsenal case that it disagreed with that finding, passing off was not part of the appeal.
These decisions were thought to have effectively prevented any claims for post-sale confusion.
However, in the case of Levi Strauss v Kimbyr  FLR 335, the High Court of New Zealand found that there could well be passing off, even where the consumer was not deceived at the point of purchase. In this case, Williams J found that the purpose of clothing branding was to "maintain the connection between the goods and the proprietor during the life of the garment after sale" and that there could therefore be passing off on the basis of post-sale confusion. As both cases related specifically to the branding on the back of jeans, the Freddy case drew a striking parallel with the facts of the Levi Strauss decision.
As Deputy Judge Stone noted, post-sale confusion is a well-established basis for bringing a claim of trade mark infringement. Specifically, Mr Stone referred to the then Mr Justice Arnold's reasoning in Datacard Corporation v Eagle Technologies Limited, at paragraphs 288 – 289. Here, Arnold J found that if a consumer were to order goods from a third party website, and was not confused at the time that the product is ordered as to the origin, but on receipt of the goods, the consumer finds the products to be labelled in a way that calls to mind the trade mark proprietor, this could still be damaging to the trade mark proprietor.
Whilst the judge noted that he would have liked to have heard opposing arguments on this issue, he found both the Levi Strauss and Datacard cases persuasive, and held that there could indeed be post-sale confusion in passing off. In support of his reasoning, Deputy Judge Stone said that there was no reason why the owner of goodwill in a product should only have this goodwill protected up to the point of sale and not throughout the lifetime of the product.
This development is an exciting and welcome one for brand owners, particularly those in the fashion industry. In fashion, brand owners specifically use distinctive indicia so that consumers can continue to recognise the products as coming from a particular source after the point of sale. Get-up extends much further than a single trade name, brand or logo that may be used in relation to a specific product. It could cover unique button formations and clippings on coats, the pattern used on the outside of a handbag, or a myriad of other features of clothing that add value to the brand but also help consumers to identify the source of the product.
Going forward, to rely on post-sale confusion, we anticipate that brand owners will need to show clear evidence of goodwill in the get-up and brand indicia. This could be done through targeted marketing to educate customers, or evidence that the type of indicia are recognised by the relevant industry as denoting a product's origin.
UK Unregistered Design Right Infringement
Freddy relied upon the following designs as part of its claim for UK unregistered design right infringement:
- The shape of the jeans when worn;
- The shape of the internal rubberised support panel;
- The shape and/or configuration of the inner parts of the upper rear portion of the jeans; and
- (As an alternative to (1) above) the shape and/or configuration of the jeans on their own.
Hugz did not deny copying the jeans, but instead sought to rely on exclusions from protection to limit and/ or invalidate the designs, and objections to the definition of the designs. Freddy was successful on all but one count of UK unregistered design right infringement
Of most interest to other designers, the judge had two notable points to make on the matters of moving designs and the must-match exclusion.
Hugz challenged the design for the shape of the jeans when worn. Hugz claimed it was not a protectable design because the shape when worn is dependent on the body of the wearer and therefore infinitely variable. The judge agreed with this assessment and found that the shape of the jeans when worn was not protectable.
As it was pleaded in the alternative, the judge then considered the design for the shape and/ or configuration of the jeans on their own. The design for the shape of the jeans on their own claimed the elastic nature of the fabrics. This design therefore accounted for the consideration of movement of an article.
Although some cases had touched on the issue in the past, it was not clear whether UK unregistered design right could protect moving designs. This was because any movement could either arguably be the result of a method or principle of construction, or the design could be insufficiently imprecise due to the movement. Deputy Judge Stone found that there was no reason why UK unregistered design right could not cover moving designs – such as fold out beds, collapsible bowls or other transforming objects. The judge found that the way that a product moved was distinct from a claim to the fact that they moved.
This clarification will be helpful to many designers that want to rely on UK unregistered design right. It is clear instead that where a design genuinely reflects the shape of the product, and that the product in question may not remain in a fixed position, that this can be protected by UK unregistered design right.
In relation to the design for the shape of the jeans when worn, Hugz claimed that the design should be excluded on the grounds that the shape of the jeans was dependent on the appearance of another article, namely the human body. Section 212(3)(b)(ii) of the Copyright, Designs and Patents Act 1988 states that a design right does not subsist in "features of shape or configuration of an article which … are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part." This is known as the "must match" exclusion, as the design must match the appearance of another article. The question was therefore whether the human body could be considered an "article" for the purposes of the exclusion.
In Ocular Sciences v Aspect Vision Care  RPC 290, it was held that the human eye could be considered an article for the purposes of the "must fit" exception. It has long been queried whether it could also be considered an article under the "must match" exclusion.
Deputy Judge Stone rejected Hugz's claim that the design for the shape of the jeans when worn should be excluded from protection on the grounds that they "must match" the wearer's body. The judge held that it was clear that the jeans were not intended to form an "integral part" of the body, with a view to making a single article. This clarifies and confines the scope of the finding in Ocular Sciences to the "must fit" exclusion only. It is clear instead that the must match exclusion should only really be triggered in instances where the product is designed to form a single article.
Freddy's primary case for breach of its settlement agreement with Hugz stemmed from infringement of its patent rights. The patent described a pair of trousers made from a knitted material, made up of three elements, and that an aperture created by two of the elements was closed by a further element and a seam, which curved around the buttocks and joined the central rear seam positioned at the intergluteal cleft.
Freddy relied on both infringement of the patent on a normal interpretation and on the basis of the doctrine of equivalents, and was successful on both counts. Hugz sought to challenge the validity of the patent, but failed to do so.
The judge found that although the curved buttock seam on the Hugz jeans did not extend all the way to the central rear seam (as a result of the design around), the Hugz jeans still fell within the scope of claim 1 of the patent. Interpreting the words of the claim in the context of the specification of the whole, Deputy Judge Stone considered that it was not necessary for there to be a separate element closed by the curved buttock seam. Instead, he held that the skilled person would consider them to be two distinct elements even with the connecting bridge of fabric in place of the seam.
This decision further supports the case law that a normal interpretation of the claim is not the same as a literal interpretation of the claim. Normal interpretation of a claim for the purposes of infringement should therefore take into account both the context of the claim, the view of the skilled person, and the patent specification as a whole.
Looking at the doctrine of equivalents, the judge found that it was clear that the Hugz jeans achieved the same result in the same way as the invention disclosed in the patent. Deputy Judge Stone confirmed that the doctrine of equivalents provides an opportunity for a defendant to a claim to rely on any material that indicates the claim should be construed more narrowly, but that in this case, the Hugz provided no such evidence.
What can we learn from the case?
- Brand owners may be able to rely on passing off where the infringing product is sold under a different brand name and the infringer has clearly sought to benefit from the brand owner's goodwill and reputation;
- Brand owners may be able to rely on post-sale confusion to support a passing off claim where it is evident that the brand will continue to accrue goodwill post-sale;
- UK unregistered design right can extend to designs that move, provided that the general shape of the design is not infinitely variable and provided that designers do not seek to rely on the way that the movement is achieved;
- The human body is unlikely to be an "article" for the purposes of the must match exclusion; and
- Normal interpretation of a patent claim is not equivalent to a literal interpretation of the words of the claim.