Claim No: IP-2022-000099 - [2025] EWHC 805 (IPEC)

There are two additional points arising in relation to alleged infringements of Design 5. In relation to 5(i), Mr Kershaw explained that Katie Green was a buyer employed by boohoo who was involved in this design. According to her, the inspiration for the boohoo legging was found on Pinterest and sent to the supplier with the following notes:

Mr Kershaw also explained that the Defendants had sought to perform a reverse-image search of Pinterest during the preparation of this case in order to try to find the image used, but had not succeeded. However, it had been possible to find the same item still being sold on Etsy, as follows:

In other words, what seems to have happened is that the First Defendant asked its supplier to copy a design found on Pinterest that can also be connected to an Etsy account in the name of Bohorose. This is consistent with the evidence from Mr Kershaw that on occasion the Defendants ask for items to be copied.

The Claimant had previously complained in 2020 about a design sold on Etsy and Depop by Bohorose. It was taken down by Etsy but then reinstated. The Claimant asserted that this was “without providing any prior art” and that Bohorose had also been selling Chanel jewellery on her Depop page for £12.00 (thereby seeking to insinuate that Bohorose was herself a copyist, and that the Bohorose leggings might have been copied from the Claimant).

None of this is relevant to the issues I have to decide. Nor was it properly the basis of pleadings or evidence. I am therefore not in a position to assess whether the design complained about by the Claimant in 2020 was the same as the design utilised by the First Defendant, nor whether it was a copy of a design of the Claimant. For all I know, and consistent with my other findings above, Bohorose may have arrived at a similar design to that of the Claimant completely by chance.

Further, the Claimant’s reference to the provision of “prior art” (which was repeated on a number of occasions during the trial) is a reference to the law relating to registered designs (which the Claimant is the proprietor of for clothing unrelated to the present case). Indeed, from what I understand, the complaint to Etsy by the Claimant was on the basis of a registered design and not Design 5 relied on the present case. Registered design cases often turn on the question of validity and the provision of a single piece of relevant prior art may be sufficient to invalidate a registered design. But there is no requirement to demonstrate copying in such cases – a registered design may be infringed by someone who is completely unaware of the registered right. In contrast, to demonstrate the invalidity of an unregistered design right requires, amongst other things, the provision of multiple examples of prior art to demonstrate that the design is “commonplace”. For infringement of unregistered design right it is necessary to show that the design has actually been copied and has been used as the basis for the infringement.

Accordingly, even if I had material available to me with which to assess the Bohorose allegation, the action by Etsy to remove it in response to a registered design complaint can have no bearing on the question of copying in the present case. Moreover, the fact that the Claimant was previously relying on a different right not pursued in this case casts even further doubt on its relevance.