23/10/2013

By Stephen Sidkin, partner at Fox Williams LLP


Agent Provocateur, the British lingerie brand, has claimed that Made in Chelsea’s Kimberley Garner has copied one of its bikini designs.

The Mazzy bikini in which rights are claimed features cut outs both below the top and above the bottoms of the bikini.

The Monaco bikini produced by Ms Garner’s brand, features a similar, if not identical, design.

However, while Agent Provocateur’s design has fluorescent orange and pink inserts, Ms Garner’s does not and Ms Garner’s design has a gold pendant hanging from the centre of the top.

Will any of this make a difference? It depends on the rights claimed by Agent Provocateur but most likely not.

If Agent Provocateur claims in the shape of the product then it does not need to place reliance on the coloured aspects. It demonstrates that the ability to make a more generalised claim is the strength of unregistered design right claims when compared to a registered right, although this can impact on the validity of the rights claimed. Equally, it again shows that while copying must be established, simply making a limited number of changes will not defeat an action if the essence of the design remains. The urban myth of making 3 or 5 or 7 changes to avoid infringement is………………….an urban myth.

Brands and design ranges produced by celebrities often face questions about how much design input that celebrity has and Ms Garner will have to demonstrate independent design if she wishes to refute copying.

This latest spat shows that brands should not throw in the towel if they see a design they consider is very similar to their’s but they have not registered it. Unregistered rights are of more limited duration and you must prove copying, but they will still be available to you.

This is another example of a celebrity hitting the intellectual property headlines. On this occasion the brand is claiming against the celebrity, in contrast with a recent case in which Rihanna pursued the retail brand, Topshop. Notably, Rihanna recently won her claim for passing off against Topshop as the High Court decided that a substantial number of purchasers would have believed that Rihanna endorsed the sale of a t-shirt which contained her image from her current album, Talk That Talk. This was despite the fact that Topshop had obtained a licence in respect of the copyright in the photograph.

Stephen Sidkin is a partner at Fox Williams LLP. Stephen can be contacted at SSidkin@foxwilliams.com.