Image: Unsplash

A recent decision over a pair of “body enhancing” jeans stands to have significant ramifications when it comes to the protection of fashion designs in the United Kingdom. In a decision handed down in November, Deputy Judge David Stone of the Intellectual Property Enterprise Court determined that HUGZ Clothing Limited is on the hook for infringing rival Freddy SpA’s patent and unregistered design right-protected denim design, and for breaching a legally-binding settlement agreement that the two parties had entered into – but maybe most significantly, for running afoul of the law by engaging in passing off. 

The case got its start in April 2019 when HUGZ – after admitting that it copied Milan-based Freddy’s patent and design right-protected “body-enhancing” WR.UP jeans – entered into a settlement agreement with Freddy. The resolution between the two parties, which enabled them to avoid formal litigation (at least initially), would prove to be short-lived, as not long after the parties made peace, HUGZ began selling a similar version of the jeans, prompting Freddy to file suit.

In filing suit against HUGZ, Freddy pointed to the similarity between its jeans – which aim to give the wearer “the appearance of slimmer hips, while simultaneously lifting and separating the buttocks” – and HUGZ’s allegedly infringing jeans. Most interestingly, Freddy claimed that by replicating the elements found in the backside of its jeans, including the metal badge, rear belt loop sewn at a 40 degree angle, two curved rear pockets, and a scalloped rear yoke, HUGZ was attempting to pass off its jeans as affiliated with Freddy’s – and benefit from the goodwill associated with the aforementioned elements of Freddy’s jeans – when no such connection exists. 

In his November 19 decision, Judge Stone sided with Freddy, holding that HUGZ – which describes itself and its “ultimate booty lifting” jeans as the “UK’s fastest growing denim brand” – is on the hook for passing off, among other claims, both in an initial point of sale sense and on the basis of post-sale confusion. 

Primarily, the court held that due to the sheer similarity between the designs of the two companies’ jeans, it is clear that HUGZ’s jeans are “an obvious rip-off” of Freddy’s WR.UP jeans. While HUGZ did not make use of Freddy’s trademark-protected brand name or logo, Judge Stone determined that it was enough that HUGZ replicated Freddy’s source-identifying combination of design elements (i.e., the “get up” of the jeans, the UK equivalent of trade dress), which he asserted that consumers have come to associate with a single source. 

As such, the court found that HUGZ aimed to mislead consumers as to the source of its jeans, and thus, is liable for passing off. 

Freddy’s WR.UP jeans

Beyond a finding of straightforward passing off, which is a cause of action similar to trademark infringement (or in this case, trade dress infringement), Judge Stone considered whether post-sale confusion is also at play in connection with HUGZ’s jeans. As distinct from the confusion that consumers might experience at the initial point of sale of a product, post-sale confusion centers on the likelihood of confusion by third-party observers of the allegedly infringing product at a later point. 

“An interesting and unique element in this case, 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,” according to K&L Gates LLP attorneys Simon Casinader and Georgina Rigg. While “the court struggled to find instances where the [post-sale confusion] question had been considered” had been considered in a passing off context, as opposed to a trademark infringement one, they note that in siding with Freddy’s, the court determined that HUGZ jeans “continue to make misrepresentations to consumers whenever they are worn, and that that misrepresentation damages Freddy,” thereby giving rise to passing off at the initial point of sale and in a post-sale content. 

The court’s finding on passing off is noteworthy for several reasons, including because in cases involving apparel and accessories, the “get up” (or trade dress) at issue is often viewed by the court as unprotectable “design elements or ornamental [features].” In the case at hand, the court stated that it is, in fact, common for jeans to bear certain design and branding elements on the backside, but ultimately found that due to Freddy’s extensive marketing efforts of its get up that consumers have come to view the combination of elements as an indicator of the source of the jeans.  

As for post-sale passing off, the decision “could be of major significance to the fashion industry players,” according to Bird & Bird LLP’s Bryony Gold, given that designers/brands “often rely heavily on the recognition of branding elements on their products by potential customers,” with those elements both driving consumer interest and sales, and also routinely falling victim to infringement as a result.

With that in mind, fashion brands could have an additional tool in their arsenal to help combat copycat designs, and while passing off can be difficult to prove, Gowling WLG’s John Coldham and Khemi Salhan state that going forward, brands may be able to rely on it in a post-sale context if they can show “clear evidence of goodwill in the get-up and brand indicia, which could be achieved through targeted marketing to educate customers [about the relevant get-up/brand indica], and/or evidence that the type of indicia are recognized by the relevant industry as denoting a product’s origin.” 

*The case is Freddy SPA v Hugz Clothing Ltd & Ors [2020] EWHC 3032 (IPEC).