G-Star Raw CV v Rhodi Ltd
The figures below illustrate the designs in dispute.
1. Whether there is such subsistence of the design right and that the Claimant acquired ownership of it;
2. Whether all or any of the alleged copying articles were made substantially similar to the original design;
3. Whether the substantially similar parts were copied from the original design, or were instead the result of an independent but convergent design process. Upon the failure of the Defendant to prove this, the court would rule that there is strong inference that the product is made substantially similar to the original design as alleged in the present case.
The Court held that the design subsists and is owned by G-Star. The designer G-Star called as witness gave a clear and compelling account on the detailed design process which resulted in the creation of the Arc Pant, which was further supported with contemporaneous documents. Rhodi’s expert witness gave evidence that there was no substantial similarity between Rhodi’s designs and G-Star’s, and that there was instead use of style ideas of usual high street designs. The Court rejected that evidence and remarked that although the measurements by Rhodi’s expert on the appearance suggest significant difference, had the measurements been precise and correct (which was not the case), it would have shown substantial similarity. Hence the Court held in favour of G-Star on subsistence and ownership.
On whether the alleged copying articles were made substantially similar to the original design, the Court ruled that one ought to look at similarities (in the eyes of customers to whom the designs are directed) not in the works as a whole but in the features. But if there is no possibility of prior access then the alleged similarity could only be a coincidence and not amount to infringement, no matter how unlikely that would be.
Notwithstanding that the incompleteness of documents concerning Rhodi’s design process was allegedly partly due to wholesale deletion of the email account of the lead designer and substantial deletion of that of another designer, the Court expressed scepticism about Rhodi’s good faith and held in favour of G-Star.
How about in Hong Kong?
Preference for Registered Design Right
This advantage of a registered design is particularly significant in the situation of claiming against infringers at international exhibitions in Hong Kong. The exhibition organisers will swiftly remove the infringers from the exhibition if your works are protected under a registered design, because a registered design certificate is a prima facie evidence of subsistence and ownership of the design right. On the other hand, if you are only claiming for copyright infringement, the exhibition organisers will be reluctant to remove the alleged infringers, because the organisers are unable to decide whether there is originality in the works which give rise to a copyright, and who is the real owner of the copyright.
As such the ruling in G-Star Raw CV v Rhodi Ltd is likely to be applicable in Hong Kong, and it is likely to extend to infringement of artistic copyright in general, i.e. that in other articles of which the visual appearance is crucial, such as cookware and toys.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2015