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

In relation to Design 2 the Claimant relies on the following features of shape and configuration:

Note that these features relate only to part of the sleeve of the garment. The rest of the garment is not described and largely not shown. This is permitted by the reference in s.213 (2) CPDA 1988 to the shape or configuration “of the whole or part of an article”.

The evidence established that this design was first made available via the Claimant’s Facebook page in December 2013. It was also shown on a model in 2014.

The Defendants objected to the subsistence of the design as a matter of principle. They submitted that the looseness and puffiness of the sleeves depended on the wearer’s choice i.e. the wearer could push the sleeve up the arm. There was no reliance on any particular size, shape or dimension.

The Defendants also submitted that the claim to a cuff reaching from ‘past the wrist’ to ‘under the elbow’ was subjective and determined by the length of the wearer’s forearm. It was vague and covered most cuffs of sleeves. It would be impossible to determine what constitutes an ‘exact or substantial’ part of being ‘past the wrist’ or ‘under the elbow’, yielding an impermissible degree of protection. The Defence showed earlier examples of sleeves which the Defendants contended would be caught by the definition, seeking to illustrate the vagueness of the plea and the lack of originality in describing it this way. However, in these designs the cuff was much shorter, and not extended as shown in the depiction of Design 2.

I agree that the design cannot be defined by reference to the way it interacts with the wearer, as that will vary from person to person for the same design of fabric. I therefore reject the attempt to define the design by reference to the wrist and elbow of the wearer. I also agree with the Defendants that design right cannot include the nature of the material being used (i.e. organza or rib fabric), which would amount to a method or principle of construction.

So in my judgment all that is left of the pleaded design is a “puff sleeve” connected to an “extended cuff”. In the representation of the design which is pleaded, the cuff is approximately the same length as the puff sleeve.

Does this retain sufficient originality to be deserving of the protection of design right?

The decision is borderline. For the Defendants Mr Kershaw pointed out that organza products were sold as a throwback to the 1980s. He exhibited a number of examples which he said pre-dated Design 2. It is right that a number of these show sleeves similar to that in Design 2, but none have the longer cuff which is a claimed feature of the design.

Accordingly, I am just persuaded that there is sufficient originality in what remains of Design 2 for design right to subsist. This supported by the absence of evidence of longer cuffed sleeves in the material relied on by the Defendants in their Defence, and the absence of any reliance on the design being commonplace.