June 21, 2021

Volume XI, Number 172

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June 18, 2021

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Riding on Coat-Tails, Doesn't Come Free: UK High Court Awards Additional Damages For OH Polly's Flagrant Infringement Of House of CB's Unregistered Design Rights

On 24 February 2021, the UK High Court found that a number of Oh Polly dress designs had infringed the unregistered design rights of its competitor, House of CB. This recent decision confirms the risk of additional damages being awarded if infringers flagrantly copy third party designs, whilst also confirming the difficulties brand owners face in bringing passing off actions based solely on copycat designs.

House of CB’s Claims

House of CB’s claims covered a total of 91 garments at the outset of proceedings, with this number ultimately being streamlined to 20 (10 chosen by each party) for the purposes of litigation. This ‘streamlining’ however, did not lead to a short judgement – with the Court still having to assess all 20 of the final products, design processes and sources of inspiration at House of CB and Oh Polly respectively.

The Judgment

The judgment ultimately concluded that seven of the Oh Polly garments infringed the unregistered design rights of House of CB – stating that in a number of cases the designs were essentially copied outright. Additionally, the judgment, delivered by David Stone sitting as a Deputy Judge of the High Court, concluded that the infringements had been sufficiently ‘fragrant’ to warrant the award of additional damages.

In reaching this conclusion, Mr Stone placed significant emphasis on the design process (or lack thereof) at Oh Polly HQ. The Court took particular issue with the accounts offered by Ms Henderson (CEO of Oh Polly) of her role in the creative side of the business, noting the number of occasions where she sent photographs of House of CB designs to the Oh Polly factory for production.

Despite House of CB’s design process being to “identify third party designs that she liked, and send images of them to the factory to be copied”, it was “with some reluctance” that the Court dismissed the claims for passing off – concluding that although Oh Polly clearly decided to “ride on the coat-tails” of House of CB’s successful business model, the public had not been deceived into thinking the brands were related.

However, the court did take to the opportunity to award additional damages, noting the “couldn’t-care-less” attitude Oh Polly had demonstrated in respect of House of CB’s rights.

Copyright 2021 K & L GatesNational Law Review, Volume XI, Number 75
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About this Author

Trainee Solicitor

Kate McDermott is a trainee solicitor in the firm’s London office.

Prior to joining the firm, Kate served as a programme coordinator for an education start up. Kate additionally was a legal assistant for a compensation law firm, where she drafted court documents, maintained client contact, handled client complaints, as well as performed ad hoc supportive and administrative duties. Kate also completed a two-week placement scheme at an international law firm, in capital markets, IP, and financial institutions litigation and regulation departments.

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Simon Casinader, KLGates, IP lawyer
Senior Associate

Mr. Casinader is a Senior Associate in Melbourne's intellectual property team with a range of experience protecting and enforcing intellectual property rights. This experience includes developing and enforcing brand protection strategies on matters for trade mark, copyright and design owners, and providing contentious and non-contentious advice in relation to all aspects of intellectual property law.

Mr. Casinader has extensive experience prosecuting Australian, New Zealand and international trade mark applications as well as trade mark and patent opposition proceedings before IP...

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