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

The Claimant’s case on infringement had two main limbs. The first was to compare what appear to be its current commercial products (and which may be made to the second version of the BKS-001 design discussed above) with the Defendant’s products. The problem with this is that it is not the right comparison to make. The Claimant should have used its first BKS-001 design for the purposes of comparison.

The second was an allegation that the text of the First Defendant’s eBay advertisement for its cargo trousers dated August 12, 2021, and in particular the list of specific features, was copied from a pre-existing listing page of pricedrop247 (a licensee of the Claimant) advertising the Claimant’s work trousers. I agree with the Claimant that this text was copied. There are just too many similarities in the arrangement and order of the words, plus the placing of full stops and capital letters, for these similarities to be due to coincidence.

Mr Kader was noticeably reluctant to answer Counsel’s question as to whether he believed these similarities to be coincidence. The substance of the question had to be put a considerable number of times before he finally said “it is probably coincidence”. I found his use of the word “probably” odd. Later, and for no obvious reason, Mr Kader went out of his way to mention a policy on eBay whereby any seller could use anybody’s listings but then went on to say that he had not in fact done that. I found it odd that he specifically wanted to mention this if it was irrelevant to anything he had done.

The combination of matters set out above meant that I did not believe Mr Kader’s denials. I find that he copied the text in question. Counsel for the Defendants sought in closing to explain away Mr Kader’s position by taking me to fresh evidence but I must take Mr Kader’s evidence as it was and not as the Defendants would like it to have been.

It might be thought that once I have found that Mr Kader copied the text relating to the Claimant’s product, the Claimant must win on infringement of design right. This is wrong for two reasons. First, these are completely different legal and factual issues. Copyright is not even claimed in the relevant text. Secondly, the Claimant has already lost on the issue of originality. If and insofar as Mr Kader ever asked S&S Swimwear to copy a second version of the BKS-001 design (as to which I make no findings, but which was effectively the case put by the Claimant) then such is irrelevant.

Furthermore the Claimant also loses on the territoriality point. The Defendants’ products were made by S&S Swimwear in Bangladesh, and the only potential authorisation to do anything was an authorisation to make those products in Bangladesh. Hence it does not matter whether or not the products appeared in a pre-existing S&S Swimwear catalogue (although no such catalogue was ever shown to me) or if they were overruns from products which S&S Swimwear had made for other customers (as Mr Kader said for the first time in his cross-examination).

The Defendants made submissions about how if (contrary to their case) the first version of the BKS-001 design was original then none of their trousers were made to that design anyway. It is not necessary to consider these submissions.

The upshot is that none of the Defendants’ sample products infringe.