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

The Claimant explained in her oral evidence that Design 1 utilised the same pieces of fabric over the breasts, but the straps were threaded in a different way to achieve the particular shape and configuration shown in Annex 1 to this judgment. In particular, the ends of the straps are such that they are tied at the neck and bottom strap (integer (iii) of the design).

I heard evidence from the Claimant that this was an unusual way of arranging the straps and panels, not least because, as shown on the mannequin in Annex 1, the middle strap is continuous round the back and so the bikini top needs to be put on over the head of the wearer before the top and bottom straps can be tied. The Defendants did not challenge this description.

The Defendants had two criticisms of the Claimant’s definition of Design 1. First, they said that because the panels and straps were the same for the 2011 design as for Design 1, just arranged differently, then 2011 was the date on which the design first came into existence. This was in fact the date that the Claimant had originally relied on in her pleading. Alternatively, they submitted that the features identified by the Claimant did not describe a protectable shape and configuration. Instead, they were either concepts and methods of construction or abstract clusters of features which are not protectable according to the case law I have cited above.

The Defendants pointed to the Claimant’s features “openings at the…bottom allowing straps to be passed through”, “forming one piece” and “being able to be tied”. They submitted that these features remain constant, whatever the shape and size of the bikini, indicating that shape and configuration was not being claimed.

Further, they submitted that the particular formulation of which strap is tied and which one is ‘one-piece’ depends on the choice of the wearer. They pointed out that the top strap is a long, single strap that can be wrapped around the neck or back, and/or twisted on the front, and can be tied behind the neck or tied behind the back. Which way the ends of the strap go is the wearer’s choice and is not the shape or configuration of the design.

In cross examination, Ms. Edwards accepted that integer (i) of the design was present in her 2011 bikini. What she asserted was different was the arrangement of the straps, with the tie at the neck and bottom strap (integer (iii)) and the top strap forming one piece (integer (ii)).

I agree that the straps are shown differently in the 2016 version. Instead of threading the top strap starting from the outside of the breast panels (far left or far right), the strap is threaded from the centre, through one panel, and then round the back through the other panel so that the ends of the strap can be tied in the middle (around the neck). This is the same threading arrangement as I have identified in the two 2011 versions on rows 1 and 3 above; it is just that the length of strap with the tie has been extended between the panels and positioned around the neck and the loop that was around the neck is now around the back.

Accordingly, the only difference between the 2011 design and the 2016 design is that, as worn, the top strap is threaded with the ends in the middle, between the panels, and tied around the neck. But this threading arrangement is already shown in the 2011 screenshot. The only difference is the way that the straps are positioned around the wearer’s neck and body. Taken off the wearer, the shape and configuration of the bikini top is the same, save perhaps for adjusting the length of the straps between the panels – which would occur to some extent in any case depending on the precise body shape of the wearer.

I do not consider that this merits a fresh design right accruing in 2016. There is insufficient originality in the decision to thread the straps and position them around the body as claimed. Alternatively, the threading features ((ii) and (iii)) are mere methods or principles of construction and are already part of the 2011 design in any event.

In short, the only difference between the 2011 and 2016 versions of the bikini is the position of the top tie (around the back or at the neck). Otherwise, the shape and configuration of the bikini is the same. The precise position of the top strap/tie on the body is an insufficient change to amount to the fresh creation of a protectable design right.

Indeed, I suspect the motivation of the Claimant’s then advisors in repleading Design 1 to move it from 2011 to 2016 was primarily because otherwise the alleged infringement would have arisen too late. Where any changes are too minor or are insufficiently protectable to merit a fresh design right accruing, the court should be alive to the dangers of “evergreening”.

Even if I ignore the change in position, dealing with the design as currently pleaded, I reject the claim that design right subsists in Design 1 from the claimed date of March 2016.