decision – IP Law Watch

Not such a friendly decision for Hugz: A new development in passing off that could help combat fashion copy-cats

Nov 23 2020

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 [2020] 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.

Cofemel’s first UK outing – The wooly world of copyright and designs

Feb 03 2020

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

ECJ Confirms that Brand Owners can Seek Remedies for IP Infringement Against Owners and Operators of Physical Marketplaces Selling Counterfeit Goods as “Intermediaries”

Jul 14 2016

On 7 July 2016, the Court of Justice of the European Union (ECJ) announced its judgment in case C-494/15, Tommy Hilfiger Licensing LLC and Others v Delta Center a.s.

The case concerned claims for trade mark infringement against Delta Center, the tenant of the “Prague market halls” marketplace, which rented sales spaces to sellers of counterfeit goods. Tommy Hilfiger and other trade mark owners brought an action before the Czech courts seeking an injunction under Article 11 of Directive 2004/48/EC, which states that: “Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC”.

The Communication to the Public is (Hyper) Linked to the Role of the User

Jul 01 2016

On 31 May 2016, the European Court of Justice (ECJ) issued its decision on the much-discussed issue of the requirements for a “communication to the public” in copyright infringement cases. It provided new guidelines on the interpretation of the article 3(1) of the InfoSoc Directive and article 8(2) of the Rental and Lending Rights Directive. The opportunity was given by the Regional Court of Cologne (Germany) that made a request for a preliminary ruling in the proceeding Reha Training v. GEMA, concerning the TV broadcast by means of TV sets on the premises of a rehabilitation centre. According to GEMA (the German copyright collection society), Reha Training failed to request permission and to pay the due royalties for communicating to the public TV programmes which belong to its repertoire.

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