Yabadabadoo! Freddy wins victory for fashion industry in IPEC post-sale confusion ruling

 

Case: Freddy SpA –v- Hugz Clothing Limted, CC Liverpool Limited and Christopher Kavanagh [2020] EWHC 3032 (IPEC)

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Italian fashion company, Freddy SpA (“Freddy”) has secured victory in the English Intellectual Property Enterprise Court, in a claim for passing off, unregistered design right infringement and passing off against English company, Hugz Clothing Ltd (“Hugz”). In this article we consider the decision in respect of post-sale passing off and the implications this has for the fashion industry.

 Background.

Freddy designs and manufactures “body-enhancing” jeans. Since 2012, it has produced its popular line of WR. UP shapewear jeans (below left). The UK and Ireland made up 11-14% of Freddy’s total worldwide sales of its WR. UP line. After an initial settlement with Freddy concerning some jeans it had sold in 2019, Liverpool-based, Hugz, launched some shapewear jeans which Freddy said were a copy of theirs. 

Goodwill in the get-up.

 Working through the established test for passing off, the court found that there was goodwill in the get-up of the Freddy jeans, dismissing the defendant’s case that the goodwill only rested in the brand names FREDDY and WR. UP. It was customary for jeans to bear branding elements on the rear pockets and it was clear that the WR. UP jeans were marketed by reference to the get-up and not just the brand names.

Obvious rip-off.

 Turning to misrepresentation and damage, the court found that the Hugz jeans were an “obvious rip-off of the WR. UP jeans” and that conventional passing off was established. The judge pointed to the very similar branding elements and how the products were marketed by reference to the back of jeans. It did not matter that the trade mark under which the Hugz jeans were sold was different as the similarities in the rear branding elements were sufficiently strong. The result was that consumers would be misled to believe there was a trade connection between Freddy and Hugz and as a result the Claimant had already suffered damage and would continue to do so.

Post-sale confusion.

Post-sale confusion refers to where consumers knowingly purchase knock-off goods because they want other consumers to believe that the products, jeans in this case, are associated with the claimant. Citing a New Zealand copycat case involving Levi Strauss and their famed red-tab, the judge noted that a portion of people would gladly buy knock-off jeans if they could be passed off as the real thing. This argument was persuasive to the English court. It found that the owner of goodwill in a product should be entitled to protect that goodwill throughout the life of the product, not just at the point of sale. The Hugz jeans would continue to make misrepresentations whenever they were worn and on the facts of this case, those ongoing misrepresentations would cause damage to Freddy each time. 

What does this mean for brands?

 This is a common-sense development in the protections available for designers. Until now, there were no authorities on post-sale confusion in passing off in English law and protecting the goodwill in clothing designs over the life of the product must be a welcome development for fashion designers and brands. At least for the time being, this case strengthens their position: providing a cause of action against copycats who imitate the overall get-up of product where it does not used the same or a similar brand name or logo.

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If you have any questions about how to protect brands in fashion industry or in any other sector, please contact the author or any member of the Freeths IP & Media team.

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Photo credit: freddy.com