Westwood Protects Iconic Images as Patent County Court shows its Mettle

Following on from my recent Fashion Design and Imitation: Flattery or Theft? blog, Westwood v Knight [2011] EWPCC 8, 22 March 2011  was the first case to be heard under the new procedural regime in the Patents County Court which commenced in October 2010.

It illustrated that designers can and will take action where necessary and where copycat designs get too close and move beyond mere flattery. It also showed how effective the new regime may become as an alternative to the High Court.

Dame Vivien Westwood bought the action following Mr Knights use of various of her iconic images, slogans and marks associated with the Westwood brand. These included slogans such as “Let It Rock”, “Destroy” and “I Love Crap”, images such as her well known royal orb with a planetary ring and her Lips logo. To add insult to injury, Mr Knight was also using these slogans in a series of domain names he had registered.

Judge Birss had little difficulty finding that Mr Knight had infringed her copyright, trademarks and had passed off his goods as hers.

He helpfully summarized within the context of a trade mark infringement the factors to be considered in considering where there exists a likelihood of confusions. These include the need to assess marks globally, a reminder that the average consumer normally perceives a mark as a whole and does not analyse the details (rarely seeing the two different parties’ marks side by side), the need to consider the overall impression created by a mark and that mere association with a registered mark is not sufficient to amount to an infringement.

He was in little hesitation in finding that Mr Knights use of the Westwood icons confused consumers familiar with the Vivien Westwood band into thinking they were buying genuine Westwood goods.  Mr Knights combination of his own images and the Westwood icons all served to reinforce this message so causing confusion to consumers familiar with the Vivien Westwood band. 

The case was also of interest in being the first Trial under the Patent County Court regime. This has restrictions on disclosure, evidence and cross examination designed to keep costs down and to allow a more efficient and cost effective alternative to proceedings in the High Court.

There are limits though as it is still essential to achieve fairness and justice. Judge Birss made it clear that he would not allow allegations of fraud, fabrication of evidence or potential deception by a party to be put before the court without allowing cross examination of the relevant witness regarding the potential accusation.  Where such allegations form part of a case that will need to be considered early and raised with the Judge at the Case Management Conference so that the necessary directions can be granted.

Despite Mr Knight representing himself, and the multitude of claims to be considered, the entire Trial was dealt with in a day. That of itself reflects the success of the new regime in the Patents County Court in achieving the ambitions it has set for itself.

Whilst not every case will be suitable for being dealt with in this way, many will. It does open up a refreshing alternative to allow owners of intellectual property rights to take action in a less time consuming and costly way; not just in the world of fashion but in all industries and sectors.

Written by Stewart Vandermark, a Director specialising in Intellectual Property matters. 

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