Not such a friendly decision for Hugz: A new development in passing off that could help combat fashion copy-cats
On 19 November 2020, the Intellectual Property Enterprise Court (IPEC) in the UK handed down its judgment in the case of Freddy SPA v Hugz Clothing Ltd & Ors  EWHC 3032, which ran for an unusually long time for the IPEC (three days).
The decision was a rare occurrence of a passing off claim, together with other IP causes of action, succeeding in the get-up of a functional item, being “bum enhancing jeans”. Ordinarily, such cases, particularly with respect to fashion items, fail as the get-up is seen as merely design elements or ornamental, or the circumstances of the use lead to a conclusion that other trade marks (e.g. brand names and logos) dominate consumer perception.
This case could embolden brand owners in relation to enforcement of the look and feel of their clothing as it creates the possibility of confusion ‘post-sale’ in addition to the point of sale.
The claimant, Freddy SpA (Freddy) launched WR.UP branded jeans in 2012, marketing the products as “body-enhancing” jeans, which give the wearer “the appearance of slimmer hips, whilst simultaneously lifting and separating the buttocks”. These jeans departed from the usual shapewear as they applied to the outer-garments using a system of silicone inserts rather than common body-enhancing undergarments.
The defendants, HUGZ Clothing Limited (among others) (Hugz) previously admitted copying the WR.UP jeans and the parties entered into a settlement agreement in April 2019. However, not long afterwards Hugz launched a second version of their HUGZ branded jeans. Freddy claimed that the marketing of the second HUGZ model jeans breached the settlement agreement, infringed their patent and various unregistered design rights, in addition to constituting unlawful passing off.
In an unusual turn of events, from June 2020 Hugz were not represented and barely interacted with the court process. In fact, no-one from Hugz attended the trial, and as a result, all Hugz’s counterclaims were struck off on an application by Freddy. The Court was therefore in the uncommon position of having uncontested fact and expert evidence from Freddy, and nothing from the Hugz other than its amended defence.
Deputy Judge Stone found an infringement of patent and breach of the settlement agreement, in addition to the more unusual aspects of the claim for passing off and infringement of designs.
Freddy claimed goodwill in relation to a combination of elements of its WR.UP jeans, including the polished metal badge, the positioning of the badge on the jeans and the positioning and shape of the seams (“Freddy Get-Up”). Hugz claimed that, because the jeans are sold by reference only to the brands FREDDY and WR.UP, all the goodwill lay in these brands, and that Hugz did not use either brand and was therefore not infringing.
The judge found that it was conventional for women’s jeans to bear branding elements on their rear pockets, and that consumers were aware, through Freddy’s marketing efforts, of the Freddy Get-Up, and had been educated that the Freddy Get-Up on jeans was an indication of origin. The Court found that the second HUGZ jeans misrepresented, through the HUGZ get-up, that there was a connection in the course of trade with Freddy.
Freddy was able to provide evidence as to the damage caused by the HUGZ jeans, including complaints from distributors and social media advertisements from former distributors of Freddy who now stock the HUGZ jeans instead. Freddy also provided an email from a long-term customer, asking if it had rebranded its product from WR.UP to HUGZ.
An interesting and unique element in this case was post-sale confusion. Post-sale confusion occurs where a consumer knows they are purchasing a ‘knock-off’ when they buy the goods, but they do so because they want other consumers to believe that the jeans are associated with Freddy and its products. Post-sale confusion is actionable as a matter of trade mark law (Datacard Corporation v Eagle Technologies Limited  EWHC 244 (Pat)) but is not a commonly pleaded in passing off.
The Court struggled to find instances where this question had been considered, and referenced instead a decision by the High Court of New Zealand in Levi Strauss and Co and Anor v Kimbyr Investments Limited, which stated:
“The whole point of this particular mark is to maintain the connection between the goods and the proprietor during the life of the garment after sale. There is no reason in principle why this aim should be frustrated. It is a legitimate and classic use of a mark. If the Kimbyr argument is correct the purpose of this mark would be negated. A defendant could insert a deliberately misleading mark on a garment, ensure that there was no confusion at point of sale, but continue to gain the benefit of its unethical trading by arguing that the confusion happened after sale only. This kind of result would cut against the clear objective of the trade marks legislation which is to support the use of trade marks to distinguish the goods of one manufacturer or trader from others and to minimise public confused.”
Deputy Judge Stone found on the evidence that HUGZ jeans continue to make misrepresentations to consumers whenever they are worn, and that that misrepresentation damages Freddy. As such, the judge found passing off at point of sale and post-sale.
There was a small but interesting note in relation to unregistered designs that also arose in this case. This was that the shape of the jeans ‘when worn’ is not a valid design and cannot be used for enforcement. Freddy attempted to claim that Hugz had also infringed one of their unregistered designs representing when the jeans are being worn. The judge found that the shape of a pair of jeans “when worn” is not a protectable design, because it is a shape that is infinitely variable depending on the particular person wearing the jeans.
To quote to Deputy Judge:
“the wearers’ buttocks would be lifted and separated, but if those buttocks are of differing shapes, the resultant shapes of the jeans “when worn” will differ”.
All the other unregistered designs infringement claims under the case were accepted and upheld.
The new and interesting development of the law of passing off in relation to post-sale confusion could represent a huge victory for fashion brands, whose garments are often imitated for the sole purpose of passing them off as ‘similar to’ a famous original. Fashion brands could have an additional tool in their arsenal to help combat copycat designs, although passing off is difficult to prove, brands could benefit from this widening of possible confusion.
Brands must also remember that care must be taken if attempting to rely on an unregistered design when being worn or used by a user.
By Simon Casinader and Georgina Rigg