IP-2022-000020 - [2023] EWHC 1303 (IPEC)

The Claimant relied on the combination of 12 features pleaded at paragraph 6.2 of the Re-Amended Particulars of Claim. I will not set them all out here, but essentially these are the features highlighted in the relevant drawings shown in the Annexes.

The Defendants’ pleaded case was that the BKS-001 design as shown in Annex 1 was (a) copied from an earlier design known as the Aldi design, annotated images of which are attached at Annex 4, and was (b) commonplace at the time of its alleged creation having regard to both the Aldi design and also a number of items of prior art. However, all of their submissions at trial were directed to point (a) and I was not addressed on any of the remaining prior art. The topic of originality over the Aldi design was explored in detail with Mr Khan during his cross-examination, as follows.

Mr Khan said that he (Mr Khan) dictated the design to a Mr Naeem Ali of Ali Textiles, who created the actual drawing when they were both present in Mr Khan’s offices in the UK. Mr Khan said that copies of the drawing would have been sent by Ali Textiles by emails or WhatsApps in April 2015 but that he could not find any of those. He had instead found the drawing which was used for the case on a USB stick.

Mr Khan agreed that the BKS-001 design was originally sold in cotton and that the fabric did not change to a 65/35 polyester cotton mix until a few months after the trousers were first offered for sale. He could not give any satisfactory explanation as to why the drawing which was dated 13 April 2015 referred to a 65/35 polyester cotton mix.

Mr Khan was shown various contemporary disclosure materials, including an email from the Claimant’s factory asking the Claimant to approve a “bend card” to be applied to the Claimant’s trousers. This bend card did not have a domain name on it, but the bend card shown on page 2 in the BKS-001 drawing did. Mr Khan was unable to explain why there was this difference.

Mr Khan was asked about the relationship between his design and the Aldi trousers design, which he denied copying. Mr Khan said that his father bought a sample of the Aldi trousers for £8.99 while members of Ali Textiles were visiting him in London, and that he (Mr Khan) showed those trousers to Ali Textiles in his offices. Thereafter Mr Khan’s evidence became more confused.

I did not believe Mr Khan’s evidence on this. I find that he not only showed Mr Ali the sample Aldi trousers but he gave them to Mr Ali to take back to Pakistan. I find that this was all done so that Mr Khan could produce a competing product at the same or a similar price.

Mr Khan was then shown an email from Ali Textiles to himself dated 1 April 2015 enclosing the BKS trousers bend card, plus a photograph of the BKS trousers. It was put to him that the BKS trousers shown therein were the same as the Aldi trousers, save that the pen loops had been replaced with a pen pocket (and there was also an immaterial change to belt loops on the back, which I will ignore). Mr Khan denied this but the materials speak for themselves and I found his denials unconvincing.

Finally Mr Khan was shown a photograph of the trousers the Claimant was selling on eBay on 25 April 2016, obtained using a Wayback Machine internet search. The only difference between the Claimant’s trousers and the Aldi trousers was again that the pen loops had been replaced with a pen pocket. Mr Khan’s attempt to explain this away was again confused.

I reject the Claimant’s case that the BKS-001 design document accurately depicts the design of the Claimant’s trousers as at April 2015. I find that the only material difference between the Aldi design and the BKS-001 design as at April 2015 (which was sometimes called “the Claimant’s bend card design” during the trial) was the change from pen loops to a pen pocket. Otherwise the BKS-001 design as at April 2015 was a copy of the Aldi design.

Furthermore this difference is so minor that it does not create a new design right in the BKS-001 design as a whole, and the Claimant only relies on that design as a whole. The Claimant did not rely on any design right in the pen pocket itself. I presume this is for the good reason that it thought any case relying on the pen pocket alone would fail, but the reasons do not matter. It follows that the BKS-001 design as at April 2015, ie the only design relied upon, is not original, and the claim must fail.

It seems entirely possible to me that there was a second version of the Claimant’s BKS-001 design at some point, most probably some time after 25 April 2016 given the Wayback Machine photograph. This second version may well be the one which is shown in the pleaded BKS-001 design drawing.

However no such second version is pleaded and as the Defendants correctly submit, I know nothing about who created it or when, or why the Claimants might own title to design right therein. It is not fair on the Defendants to try and construct a case which is not merely unpleaded, but which is contrary to the case which the Claimant has pleaded. Indeed the Claimant repeatedly doubled down on its case that there was only ever a single version of the BKS-001 design, long after it must have become apparent to the Claimant that such a case was unsustainable. I will disregard any such second version.

In case I am wrong, I will go on to consider infringement.