G-Star Raw wins design right case over Voi jeans copying its Arc Pant style

What happened

G-Star makes the Arc Pant, a jeans style known for its twisted, 3-D leg shape created by an unusual three-panel cutting pattern. It claimed nine styles of Voi branded jeans, imported and sold by companies in the Rhodi group, copied this shape and so infringed its unregistered design right, a right that protects the shape and configuration of an article without needing registration. The defendants said any similarity came from following general denim fashion trends rather than copying, and counterclaimed for a declaration that they had not infringed, plus repayment of money paid under a bank guarantee from earlier litigation between some of the same parties.

What did the court decide in G-Star Raw Cv v Rhodi?

The court found that unregistered design right existed in the specific Arc Pant design features and belonged to G-Star, and that all nine Voi styles were made substantially to those designs. The striking similarities between the garments, combined with proven access to G-Star's products and the defendants' incomplete and unsatisfactory evidence about how the Voi designs were actually created, supported an inference of copying that the defendants failed to rebut. Four of the companies involved in designing, importing and marketing the garments were held liable because they had the knowledge, or reason to believe, that the garments were infringing. Two dormant or holding companies and the two individual director defendants were cleared, as there was no evidence they personally took part in a common plan to infringe or had the relevant knowledge. The counterclaim for a declaration of non-infringement was dismissed.

What we learned from this

• What I'd take from this is that a business accused of copying needs to be able to show, with real evidence, how its own design was actually created. Here the gaps in the defendants' disclosure and the absence of key designers as witnesses made it much harder to explain away striking similarities.
• Unregistered design right can protect a specific distinctive shape feature of a product, not just the whole garment, so a claim can be built around one striking element.
• Liability in a group of companies tends to follow actual involvement in designing, importing or marketing the infringing product, not just a general management or ownership role.
• By the time of this judgment the design right had entered its 'licence of right' period, so no injunction was available even though infringement was proven, which shows timing can limit what remedy is actually achievable.

Things to be aware of

The businesses involved