Conventional passing off
The case - Freddy SpA v Hugz Clothing - centred on designer “WR.UP” jeans. These feature a distinctive arrangement of seams and fabric aimed at “shaping the female buttocks and hips”. The claim related to similarity between WR.UP and HUGZ jeans. The judge accepted that the HUGZ jeans were “an obvious rip-off of the WR.UP jeans”, and that HUGZ Clothing misrepresented a connection with the Freddy brand at the point of sale. For that reason, Freddy’s claim for “conventional” passing off succeeded.
Confusion after sale
Freddy also argued that even where a consumer knew (at the point of sale) that HUGZ and Freddy were unconnected brands, the consumer would still want others to believe that their HUGZ jeans were associated with Freddy and the WR.UP design. This is post-sale confusion, and is distinct from conventional passing off as the purchaser was not confused. Instead, the confused consumers are those who see the purchaser’s leg-wear and wrongly conclude from the design that it is a Freddy product. Post-sale confusion is a familiar concept in trade mark law, but has not until now been successful in a passing off case.
If this precedent endures, it could be a powerful arrow in the quiver of designer fashion brands, long subject to imitation on the high street. After Freddy v Hugz, designer brands could add a passing off claim to their other rights (registered trade marks, designs etc) if they could show that high street purchases of similar styles were likely to cause post-sale confusion in others, regardless of whether the purchaser was misled. This could even alter the landscape of high street fashion design and retail, an important if not necessary aspect of which is taking inspiration from luxury brands.
But there are aspects of this case that make it shaky ground. HUGZ Clothing did not turn up to court or submit evidence. The judge, on the point of post-sale confusion in particular, said that “it would have been preferable to have heard arguments from both sides”. This might have flagged up differences between Freddy’s claim and the trade mark cases.
After-sales confusion in trade mark law
In the absence of relevant passing off examples, Freddy relied on a trade mark case - Datacard Corp v Eagle Technologies. That case, importantly, looked at a situation where a purchaser orders goods from a particular seller’s website, and later (on delivery) the labelling leads the purchaser to believe that the goods came from a different seller. This is a sort of post-sale confusion, but it focuses only on the mind-set of the purchaser, and not others around them. But in Freddy v Hugz the situation was different. It involved a consumer, who is not confused, wearing HUGZ jeans and hoping to make others think they were Freddy jeans.
Example from New Zealand
A comparable New Zealand passing off case (Levi Strauss v Kimbyr Investments) also concerned jeans. There, Levi Strauss alleged post-sale confusion on the strength of a fabric tab on the rear pocket in Kimbyr’s design. Kimbyr argued that the price difference between their product and Levi Strauss’s prevented confusion at the point of sale. But that judge concluded that the whole point of a mark like Levi’s red tab is to maintain the connection between the goods and the producer “during the life of the garment”. Imitators should not be able to escape liability for passing off simply by averting confusion at the point of sale -
“the possibility of buying a cheaper pair of jeans…which could be passed off as the plaintiffs’ jeans would be very attractive to some purchasers”
This has hallmarks of unethical trading about it, but it remains unclear that there is a robust legal justification to prevent it.
As things stand, Freddy v Hugz creates a window of opportunity to tackle imitation goods through a passing off claim, where other options are unavailable or weak. It is not yet clear whether other rulings will support this approach, but it is worth considering in suitable cases.
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