A recent Intellectual Property Enterprise Court decision highlights the challenges independent designers face when protecting their work in the fast-fashion industry. This case offers valuable insights for businesses operating in fashion, retail, and consumer goods sectors.
The Intellectual Property Enterprise Court recently delivered a judgment in the dispute between independent design Sonia Edwards and fast-fashion group Boohoo Group Plc. The claim from Edwards centred around infringement of UK unregistered design rights in five garments, alleging that Boohoo had copied Edwards’ designs.
What is unregistered design right?
Unregistered design right is a legal protection that automatically covers the shape and configuration of a 3D product without the need for registration. It automatically arises for up to 15 years from creation or 10 years from first marketing, whichever is shorter.
Background
Ms Edwards designed and marketed a number of items, including a multi-way bikini top (design 1), two ruched skirts (design 2 & 3), a puff sleeve top (design 4) and ruched leggings (design 5). Edwards claimed that Boohoo had copied the designs without the necessary license and so infringed her unregistered design right. The dispute highlighted three key issues:
- Subsistence of the UK UDR rights in the designs, and whether such rights actually existed.
- Which features of the items were actually protected?
- Did infringement actually occur, did Boohoo copy her designs?
Case findings and outcome
The Court’s Analysis
- Subsistence of Design Right
For design 1, the court held that there was an earlier version of the design dated 2011, meaning that the UDR in this item had expired by the time that the copying would have occurred.
The court found that designs 2, 3, 4 and 5 did benefit from protection.
- Which features were protected?
The court highlighted that this was only for the shape and configuration of the items, as decorative features, features not visible or construction methods are not included within the scope of protection.
Edwards’ claim was based on photographs of the items, rather than actual design drawings, which had negative impacts on the strength of her case.
The court also highlighted that in relation to design 4, features that only really existed when the item is worn (i.e. puff sleeves) were not protected under UDR.
- Infringement
For infringement of UDR, there must be evidence of actual copying. The court’s decision against infringement was based on the fact that Boohoo could demonstrate independent design process, and that Ms Edwards’ social media presence was particularly limited. The items in question were also found to be relatively commonplace in the industry that the parties operate.
Key takeaways
This case highlights how the fast-fashion model heightens the risks to creators and dilutes the strength of copying claims. The judge made note that given the saturation of the market, similar design features can arise independently. The judgement presents a number of takeaways for businesses operating in fashion, retail or consumer-goods sectors.
- Registration of Designs: Registered design rights last longer than unregistered rights, and there is no requirement to prove copying. Had Ms Edwards registered her designs, the outcome of this case might have been very different.
- Ensure that you have a detailed record of ownership of your designs. In the event that you accuse a third party of copying, this will be vital for the success of your case.
- Ensure that you are relying on designs from the correct date. In this case, as Ms Edwards relied on designs where she had actually released an earlier version, her later design was invalidated which was detrimental to this case.
- Prepare design documents such as CAD or a detailed design drawing. This will ensure stronger protection, relying on Instagram photos may not be sufficient.
Practical Implications
The Edwards v Boohoo decision demonstrates that unregistered design rights offer limited protection in the fast-fashion sector, where similar designs often arise independently. This case emphasizes the importance of strategic design portfolio management, comprehensive documentation, and proactive risk assessment for both protection and enforcement purposes.
If you require further advice on brand protection or IP enforcement, please contact us at [email protected]
