The appeal of design rights: will G-Star’s resounding win against Rhodi in the High Court be overturned on appeal?
Back in February 2015, G-Star Raw secured a decisive win against Rhodi in its claim against for infringement of the UK unregistered design rights in its well-known 3D jeans – the “ARC Pant”. Amongst many other things, G-Star was awarded an injunction to prevent Rhodi’s sales of nine styles of jeans marketed under the “Voi” brand.
Rhodi’s claim that their styles were created without reference to the ARC Pant and that they were just following general fashion trends was found to be inaccurate – not least because they provided very limited disclosure of their design process to substantiate this claim.
Rixt van der Tol, G-Star’s main designer of the Arc Pant, was an excellent witness. She described the number of iterations she had to go through (the entire process took seven months) and the significance of the “anti-fit” design. She was even described by Rhodi’s expert witness as ‘very, very inspiring’. From her evidence it was clear that the ARC Pant was a big step forward in terms of jeans design and was not commonplace in 2011.
In order to succeed in their claim, G-Star had to prove that Rhodi had copied the ARC Pant design. The timing (the Voi jeans came out after the ARC Pant) coupled with the ARC Pant’s enormous success led to a presumption of copying that Rhodi was unable to rebut. This is unsurprising given the limited information Rhodi provided on the design process and its refusal to call any of its designers as witnesses.
Now Rhodi is trying to appeal the High Court’s decision. The judgment was pretty comprehensive but there is always a chance that a big enough hole can be found to convince the court that Rhodi should be allowed to appeal the decision. The High Court found that all nine styles of Rhodi jeans in issue were infringing. Inevitably some styles are closer to the ARC Pant than others. From what Rhodi’s lawyers have said to the media, it appears that Rhodi’s tactic is to try and convince the Court of Appeal to reduce the number of styles which are held to be infringing (and so reduce the damages). Its problem is that copying has been pretty firmly established and whilst some of the styles of jeans are a little further away, they are ultimately all copies of the ARC Pant.
Rhodi should find out in June 2015 if its request for an appeal has been accepted. We will keep you posted. In the meantime, here are a few take home lessons from the judgment:
- If you can claim UK unregistered design rights you are often on to a winner. Not only are such rights highly versatile but they also last considerably longer than Community unregistered designs (up to 15 years).
- A design qualifies for UK unregistered design right if one or more of its designers is: (i) an EU citizen; or (ii) from another ‘qualifying country’ which has a reciprocal arrangement with the UK (including Hong Kong and New Zealand).
This means that most European businesses can benefit from the right (even if they are not based in the UK).
- Failure to provide adequate disclosure of the design process never looks good and is often the dividing line between success and failure in court. So, keep those records in order and make sure you back everything up.
- Good evidence from the original designer is extremely helpful. But if your designer will not turn up to court, you are in need of Harrison Ford.