Freddy SpA created a uniquely different range of jeans which was globally popular and commercially successful. A competitor decided to take advantage of the idea and sold almost identical jeans in the UK under a different brand name.
Freddy SpA’s jeans were protected in the UK by patent rights and by unregistered design rights. Although the competitor had tried to avoid infringing the patent rights with a modified design, Freddy SpA successfully sued the competitor for patent infringement, unregistered design infringement, passing off and breach of an earlier settlement agreement.
In 2011, Freddy SpA created shape-enhancing jeans which were launched as WR.UP branded jeans in 2012. The jeans are designed to give the appearance of slimmer hips, whilst lifting the butt. In the past, shapewear had usually been available in the form of underwear, but the development of shapewear as outerwear by Freddy SpA was new. The jeans were popular with celebrities and were a commercial success, with global sales reaching £18.9 million by 2016. WR.UP jeans were selling in over 40 countries, with the UK and Ireland making up 11-14% of annual sales.
Mr Kavanagh was the director of two companies, HUGZ Clothing Limited and CC Liverpool Limited, which marketed and sold jeans in the UK which were almost identical to the WR.UP jeans, under their own brand name “HUGZ”. In 2019 an agreement was reached between these companies and Freddy SpA in the form of a Settlement Agreement. During these negotiations Mr Kavanagh admitted to copying the WR.UP jeans.
A second version of the HUGZ jeans was launched, and these have been on sale since at least 2 May 2019. This second version of the HUGZ jeans was intended to avoid infringing the patent rights owned by Freddy SpA.
In this case (EWHC 3032) before the UK Intellectual Property Enterprise Court (IPEC), the Claimant (Freddy SpA) submits that the Defendants (Christopher Kavanagh and his two companies) have:
breached the Settlement Agreement
infringed the Claimant’s EP(UK) patent
infringed various UK unregistered design rights
engaged in unlawful passing off
The Defendants entered a counterclaim of invalidity of Claims 1, 2 and 5 of the patent.
At the hearing, it was first considered whether the patent was valid and infringed. The UK unregistered design rights were discussed. The Judge then turned to the matter of unlawful passing off and the Settlement Agreement.
Figures 1 and 10C from the patent illustrate the key features of the patented jeans:
 EWHC3032 (IPEC)
The Judge was provided with samples of the WR.UP jeans and the second version of the HUGZ jeans for comparison.
The Defendant argued that the patent was not novel over two prior art documents Miyake and Kennedy. However, in both of these citations, the whole of the rear of the garment is made from a single piece of material and therefore, there is no disclosure of a “central seam adapted to be positioned at the intergluteal cleft,” which is a key feature of Claim 1 of the patent. Miyake disclosed a girdle made using a warp knit jacquard machine. Kennedy is also an undergarment, knitted in one piece. Claim 1 was found to be novel over both of these citations.
The Defendant also argued that the patent was obvious in view of Miyake and Kennedy when combined with Cooke and Duckman. Cooke relates to close-fitting comfortable trousers but there is no teaching of any resilience in the fabric. Duckman is a patent for hosiery created on a circular knitting machine. The tight “control” sections are around the upper leg part (where there is a double layer of net) and at the waist panel which is made from spandex and nylon.
The expert witness put forward convincing arguments why a skilled person would not arrive at the invention based on the prior art combined with the common general knowledge, and therefore the Judge concluded that the patent is not obvious over Kennedy, Miyake, Duckman and Cooke.
It was admitted that the first version of the HUGZ jeans infringed the patent claims. The second version of the HUGZ jeans were supposed to be a “design-around”. The Defendant made one change, as can be seen in this photo. In this modified design, a single piece of fabric makes up the areas labelled 1 and 2.
 EWHC3032 (IPEC)
The patent claim required that the second element comprised two parts which are secured together at the intergluteal cleft of the buttocks by a central seam positioned at the intergluteal cleft. The fabric of the second version of the HUGZ design is one piece with two sections joined by a small bridge of fabric. The question was whether this modification would still infringe the claim?
The expert witness for the Claimant said that this area of fabric would be understood by the skilled person as a second element as defined in the claim. The reasons given for this included that the section of fabric covers the buttock, is separate at every point except between the inner edge of the rear pocket and the vertical seam and has to be sewn into place around all of its edges. The only difference is that the seam is slightly foreshortened and ends before it meets the intergluteal cleft seam.
The Judge agreed and said that the second version of the HUGZ jeans infringe Claim 1. If equivalents are considered, the second version of the HUGZ jeans would definitely also have infringed Claim 1.
For passing off to have occurred, the Claimant (Freddy SpA) must prove that their brand had goodwill, that there was misrepresentation by the Defendant and that there was damage (e.g. to sales) caused by the misrepresentation.
Freddy SpA listed the elements of the get-up of their jeans and provided evidence of lost sales. In their defence, the Defendants said that they hadn’t used the Freddy SpA and WR.UP brands, and said it was customary for jeans to display brand logos on the rear pockets.
The jeans were compared. The Judge found that the second version of the HUGZ jeans were an obvious rip-off of the WR.UP jeans – the Defendants have clearly adopted very similar branding elements which were an obvious reference to the Freddy SpA get-up. There are only minor differences – the image on the metallic badge, the single diagonal belt-loop, but these are not enough to prevent misrepresentation.
 EWHC3032 (IPEC)
The images above show the WR.UP jeans on the left, and the first version of the HUGZ jeans on the right (the second version differs only in that the seam is foreshortened and ends before it meets the intergluteal cleft seam).
The Judge decided that there was a connection in the course of trade with the Freddy SpA jeans, and that Freddy SpA has suffered damage, and will continue to do so whilst the second version of the HUGZ jeans are on sale.
The Judge found that there was passing off at the point of sale and post-sale.
The Judge considered:
the shape of WR.UP jeans as the “when worn design”
the shape of the internal rubberised support panel
the shape of the inner parts of the upper rear portion of the garment – “inner parts design”
the jeans on their own
The Defendants had admitted that they had copied the WR.UP jeans to create the first version of the HUGZ Jeans, with the only difference in the second version of the HUGZ jeans being the curving false pocket seam foreshortened prior to meeting the intergluteal cleft seam.
The Judge decided that the “when worn design” (1) is not a protectable design as the shape will depend on the wearer, so this is not a valid design.
The “jeans on their own” design was considered in detail (must match, must fit, surface decoration), and the Judge decided that the second version of the HUGZ Jeans are made exactly or substantially to the WR.UP jeans and all the features of (2), (3) and (4) were present. Therefore, the rubberised support panel design, inner parts design and jeans on their own design are all infringed by the second version of the HUGZ jeans.
Breach of the Settlement Agreement
Under the Settlement Agreement of 3 April 2019:
The Defendants were obliged not to deal anywhere in the world in products whose distribution in the UK would have been an infringement of the patent.
The Defendants were also obliged not to deal in products which would have been an infringement of the unregistered design rights as had been identified in the letters (between the two parties).
The Judge found that the patent is valid, and therefore the Defendants are in breach of the agreement in relation to the patent. The second version of the HUGZ jeans were made exactly or substantially to the same design as the Freddy jeans and therefore would infringe. The Defendants tried to argue that they would have taken a licence of right from the Claimant. The Claimant submitted that this is irrelevant to the question of breaching the agreement.
The Judge agreed that it didn’t matter whether the Defendants had offered to take a licence of right, the products (the second version of the HUGZ jeans) still infringed. The offer of a licence of right limits the relief a court can grant to the Claimant, but it does not stop a product from infringing the patent or unregistered design rights.
After a two-year legal battle, the Claimant succeeded with the case for patent infringement, unregistered design infringement (other than in relation to the When Worn Design), passing off and breach of the Settlement Agreement.
Remember that many countries, including the UK, offer protection for unregistered design rights, usually for a limited time from the date of creation.
If you become aware of IP rights which are similar to the products you are making, selling or importing into the UK, seek professional advice to check whether you might be infringing.
If you have created a new product, consider filing an application for one or more registered designs to improve the scope and duration of protection.
For more information about this case or any other related case law, please contact Gail Taylor, or your usual Kilburn & Strode advisor.