Edwards v boohoo: Unregistered design rights can protect your clothing designs - but there’s a better way

POV: You're an independent UK designer, living the dream, designing, making and selling the garments that you love to a growing customer base. Then one day you see a garment being sold by a fast fashion giant that is very similar to one of your designs - almost identical!  

This is clearly the position Ms. Edwards felt she was in when she brought an unregistered design right infringement action against boohoo in relation to five of her clothing designs.

Thanks to the tenacity of Ms Edwards in pursuing this case against boohoo, we now have fresh case law which provides a number of learning points in relation to a matter that is of increasingly common concern to independent designers - how to protect your designs from being copied by a fast fashion giant. 

The Edwards v boohoo case is unusual because the defendants did not make any arguments that Ms Edwards' designs were not eligible for protection due to a lack of originality, despite Deputy Judge Mitcheson KC indicating at numerous points throughout the judgment that this may well be the case.  As a consequence of this, comprehensive consideration of the extent of protection afforded by the designs, and of whether infringement was present, was provided in the judgment.

Some of the discussion also offers interesting insight into the inner workings of fast fashion companies and how they go about designing their products.  This included findings of inaccurate marking of IP ownership, and the deletion of swathes of documents providing a paper trail for product design and manufacture due to employee churn.

The judgment is at times scathing in its commentary on the fast fashion defendants, and generous in giving the self-representing claimant the benefit of the doubt.  But ultimately, as you would expect, it appears well reasoned and fair in its outcomes.

My overarching feeling from reading the judgment is that there is some hope for those wishing to enforce unregistered design rights in garments, but there is also a better option for protection of these designs.

Understanding Unregistered Design Right

Unregistered Design Right protects the shape and configuration of a whole or part of a 3D product for at least 10 years. 

There has long been a question mark over whether the shape and configuration of a 3D product can be applied to clothing at all.  In handing down his judgment in the case of Edwards v boohoo, Deputy Judge Mitcheson KC has answered this question, and also provided a number of key points to consider.

1. Fundamentally, there is no reason why unregistered design right should not subsist in clothing.  However, that protection relates to the garment when it is off the body.  Any shape that the garment takes only when it is worn is not protected, for the simple rationale that the shape will change depending on the shape of the wearer.  Two examples of this were provided in the Edwards v boohoo case.  The first was a particular configuration of a multi-way bikini.  It was decided that no design right subsisted because although the garment could appear different depending on the manner in which it was worn on the body, the garment was not different in shape or configuration when not on the body.  The second example related to a puff sleeve, and a question over whether the sleeve would be puffed when not worn, or whether the puff depended on the positioning of the sleeve on the wearer's arm.  If the shape did not change between wearers, then the garment would also have that shape even when not being worn, and the design right protection would extend to that shape.  

2. Another point made on shape and configuration relates to ruching.  It was decided in this case that ruching in a garment forms a distinct three-dimensional element which goes beyond merely surface decoration, and therefore can be protected by unregistered design right.  One could speculate that the same logic may apply to pleating, shirring, gathering or the like.

3. Attention must also be paid to the requirement for the protection to apply to “whole or part" of the garment.  Part of a garment cannot be a disembodied selection of features of the garment, e.g. a zip here and the end of a sleeve there.  

4. Returning to fundamentals, a design does not protect a concept. It can only be considered a design for the purposes of unregistered design right once it has been reduced to form.  Deputy Judge Mitcheson KC provided somewhat poetic commentary on the boundary between an idea and an expression of an idea (see paragraph 20 of the judgment).

5. The manner in which the design is recorded is important.  In the case of Edwards v boohoo, the protected designs were construed as being broader because they were based only on (photographs of) modeled garments rather than a design drawing, a tech pack, a graded pattern or the like. On the one hand, this increased the likelihood that boohoo's garments infringed the designs, but on the other hand, this would have reduced the likelihood of the designs being considered original, e.g. not commonplace, if the defendants had argued such.

Once it was determined that some unregistered design right did subsist in Ms. Edwards' designs, Deputy Judge Mitcheson KC went on to consider infringement of the designs.

Unregistered design right infringement only arises when it can be proven that the infringing design was copied from the protected design, rather than having been designed independently.  The products must also be made exactly or substantially to the design in order to be infringing articles.

In this case it was decided that there was no infringement because:

• there was no evidence that Boohoo copied Ms. Edwards' designs (although it was established that direct copying of third party designs from social media does occur), and
• some of the products were not made exactly or substantially to Ms. Edwards' designs.

Deputy Judge Mitcheson KC additionally commented that it is not unlikely for fast fashion companies to independently arrive at the same design as someone else when they are adding 800+ designs to their product range each week.  

The conclusion is that clear evidence of copying is essential to win an unregistered design right case, but is extremely challenging to obtain. 

What is The Better Option?

There is one action that designers can take to substantially improve protection of their designs in the UK.

Register each design as a UK Registered Design.

This is a relatively straightforward and low cost process.

Multiple designs can be applied for in a single application process.  So, if you are about to release a new collection, then once your designs are finalised you could file one  application with all of the designs from that collection.  This is both administratively and cost efficient, with a fixed application fee for between 2-100 designs.

A UK registered design can last for up to 25 years (longer than unregistered design right), and can be enforced against any design that gives the same overall impression. That is regardless of whether or not the infringing design was copied from your design.

As made evident from the case of Edwards v boohoo, copying can be extremely difficult to prove, especially when fast fashion businesses do not retain comprehensive records of their design process for every garment.  The benefit of eliminating the hurdle of proving copying by registering a design cannot be overstated.

Your application to register your design in the UK can be filed up to 6 months after you first disclose your design, which might provide some lee-way to see which designs take off or are most popular, and thereby allow some cost and administrative efficiency in obtaining protection. However, to ensure the most comprehensive protection for your designs, we would generally recommend applying for registration for all designs before publicly disclosing the designs where possible.  It is inherent that fast fashion businesses move quickly, therefore if they notice your design going viral they may be able to launch a copy before you can register the design.

A registered design can be defined by up to 12 drawings of the design that are filed in an online application. These could be photographs or design drawings. The design drawings should NOT be stylised illustrations.  Rather, CAD drawings clearly, realistically and accurately showing the important design details are recommended.

The drawings are the most important aspect of a registered design, as this is what defines the scope of protection.  Therefore, care must be taken to ensure that the drawings meet the requirements of the UK Intellectual Property Office and accurately protect your design.  

At Marks & Clerk we have teams specialising in design protection and IP for the fashion industry.  For advice on filing a design application, leveraging registered designs, or any other IP issues, please get in touch.

I acknowledge that copying undoubtedly takes place within the fashion industry, particularly in fast fashion. Every time the Defendants ask manufacturers to reproduce images found on social media there is a risk of someone's design right being infringed. But the stark truth is that there are also only so many ways to design clothing to fit the human body. Given the enormous numbers of articles being churned out by the likes of the Defendants each week, it is completely unsurprising that as a matter of chance, some of these resemble articles designed previously by others.

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