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May 2004




Court finds reputable Italian design studio copied pineapple motif.


On 28 April 2004 the High Court found that a company importing a fabric called “Pineapple” into the UK was guilty of copyright infringement even though they had nothing to do with the production or design of the fabric that had been designed and produced in Italy.


The infringing fabric was first spotted by the English designer of the original fabric in a shop in Doncaster. He did exactly the right thing by making a purchase and retaining his sample. As copying was denied, it fell to the trial judge to decide the two issues that are crucial in any copyright infringement case:


(a)   Was the pineapple design sufficiently original to be protected by copyright; and

(b)   Were the similarities between the two fabrics were so great that they could only be the result of copying and not independent creation.


On the question of originality the judge was shown a number of examples of architectural pineapples in an attempt to persuade him that the design was commonplace and not warranting protection. However the judge accepted that the simplified and stylized version of the original design was sufficiently different to qualify for copyright protection.


The way that the courts tend to approach proof of copying is to look at the similarities between the designs. If they are sufficiently similar, it falls upon the designer of the fabric alleged to infringe to explain how he came up with the design. In this case the suggestion that the Italians studio ( Dubei) had derived their design from a book cataloguing the V&A’s textile collection was rejected as there was nothing in the book sufficiently similar. The judge said there was no adequate explanation as to the genesis of the design.




This case contains a couple of important lessons;




Oxford Blue fights off university challenge to its trademark.


In 1985 HS Tank and Sons ltd came up with the name OXFORD BLUE as clothing brand and registered OXFORD BLUE that same year as a trademark. The brand was reasonably successful in its chosen markets and between 1992 and 2002 approximately 2.5 million garments branded as Oxford Blue were sold.


In September 2002 Oxford University applied to invalidate the trademark. The grounds for the application were that consumers would be mislead into thinking that the clothing brand was connected with the university and particularly the sporting award given to those who are in the Oxford university sports teams which compete against Cambridge university.


The clothing brand was delighted when the trade mark examiner hearing the case threw our Oxford University’s challenge allowing the clothing company to continue using the brands. The main reasons for the decision was that because the University had never carried out any business or commercial activity under the OXFORD BLUE mark it did not have a legitimate business interest to protect.




By registering its brand at the outset OXFORD BLUE were in a much stronger position when it came to dealing with the challenge by Oxford University. The burden fell on the university to have the trademark invalidated. The longer the trademark has existed the harder this is to do. If the person challenging has allowed trade to continue under that mark for five years without a challenge, they may be barred from objecting.


Oakley sues over it sunglasses and Animal fights back


Oakley has registered the distinctive design of its sporting sunglasses with the UK designs registry. Animal is clothing and accessories brand with an emphasis on beach and surf wear.  Earlier this year Oakley issued court proceedings alleging that the designs of certain Animal sunglasses infringed its registered designs. Animal has responded by challenging the validity of the Oakley registrations by suggesting that the designs were not original at the time they were filed. The outcome of the case is expected later this year.


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