DKH Retail Ltd v H Young Operations Ltd [2014] EWHC 4034 (IPEC)

8 December 2014

Two day trial in October 2014, Intellectual Property Enterprise Court. Iona Berkeley was counsel for the Claimant.

The subject matter of the case was UK Unregistered Design rights and Community Unregistered Design rights concerning fashion garments, specifically a gilet.

The Claimant, DKH Retail, which trades as the brand Superdry, alleged UK and Community Design right infringement by the Defendant, H Young Operations, which trades as the brand Animal, in relation to the Animal Glaisdale gilet which was said to infringe the Claimant’s design rights in the Superdry Academy gilet. The Defendant argued that it did not infringe both sets of design rights and said that the Claimant’s asserted rights were invalid on many grounds including with regards UK Design Right, the must fit exception, the method or principle of construction exception and that the designs were commonplace. With regards the Community Design Right the Defendant alleged invalidity on grounds which included the features relied upon were excluded as they were solely dictated by technical function, the spare parts exception, the complex products exception and that the designs had no novelty or individual character. The case also considered the newly amended Section 213 of the Copyright Designs and Patents Act 1988 (the new definition of a design).

HHJ Hacon in the Intellectual Property Enterprise Court gave judgment for the Claimant and dismissed all the Defendant’s arguments on invalidity, finding the UK and Community Design Rights relied upon valid. Further the Judge found the Claimant was successful in proving infringement of both its Community and UK Unregistered Design rights in the Superdry Academy gilet. The Claimant was granted an injunction, an inquiry as to damages and associated relief.

Iona Berkeley was counsel instructed by Fox Williams LLP for the Claimant, DKH Retail Ltd (Superdry).

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