Designed to succeed: getting unregistered design protection right

How much effort should designers put into creating design documents?

In the High Court decision of Edwards v Boohoo and others ^[1], the defendants criticised the claimant for not having a "design document", being a record of the design by a drawing, written description, photograph or other recording.

Here, we explore how the existence (or lack) of a design document can impact how a designer pleads their case, and whether there is a return on investment in creating design documents before bringing the designs to life.

Lessons from Edwards v Boohoo

Welsh designer, Sonia Edwards ("Claimant"), claimed that Boohoo.com UK Limited and others ("Defendants") had infringed her unregistered UK design right (UKUDR) in relation to 5 clothing articles – see decision here for images of the articles.

The Claimant appeared without legal representation in the proceedings, as a litigant in person, and was criticised by the Defendants for how the claims were pleaded. In particular, the Claimant's claims were based on UKUDR subsisting in the completed garments, as opposed to how they were described or defined in design documents. However, the judge noted that it was not a requirement for a design to have been recorded in a design document for UKUDR to subsist.

• Absence of a 'design document' (i.e. a record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise) is not fatal to a claim for UKUDR. Section 213(6) the Copyright, Designs and Patents Act 1988 clearly states that UKUDR can arise once an article has been made to the design.

While there is no requirement for designs to be noted in a document with dimensions, the judge stated the benefits of describing designs in reference to dimensions, namely that they would allow the assessment of copying or infringement to be done more easily by comparison.

• Although not bound by specific measurements and dimensions, claimants must be able to identify with sufficient precision what features comprise the design.
  • Where an item's dimensions differ slightly (e.g. a few inches longer/shorter), the claimant may still be able to argue that an allegedly infringing item has been made substantially to the design, without the need for an exact match in dimensions.
  • However, describing the design too generally can make it easier for defendants to argue that the design is (i) commonplace (if those same features can be found in earlier designs) or (ii) a method or principle of construction (i.e. a process or operation by which a shape is produced, as opposed to the shape itself). If such arguments succeed, UKUDR will not subsist, and there can be no finding of infringement.

Furthermore, the Claimant relied on numerous 'hidden' (or missing) features of the garments, including "concealed waistband", "lack of seams on the sides", and the "absence of zips and other fastenings". However, these features could not be taken into account; the judge reiterated that only those features than are present can be protected by UKUDR, excluding them from consideration.

• Design protection is aimed at protecting the 'appearance' of a product. Although UKUDR does protect both internal and external parts of an article, the features must be present; the court will struggle to protect the absence of a feature.

Another point of contention was whether garments should be defined as worn or off the body. The judge held that the assessment has to be of the garments off the body, because clothes would inevitably look different depending on the individual wearer.

• This issue is unique to designs that take the shape of the items (or persons) they are intended to be used on or with, such as clothes. Subject to the design being described well, this approach should make it easier to argue that an item has been copied – infringing parties cannot hide behind the fact that different users will give the items a different shape.

Regarding the case as a whole, the judge pointed out the nature of fast-fashion, stating that "the stark truth is that there are also only so many ways to design clothing to fit the human body. Given the enormous numbers of articles being churned out by the likes of the Defendants each week, it is completely unsurprising that as a matter of chance, some of these resemble articles designed previously by others, including the Claimant. Further, the abstract way in which the Claimant has described her designs (so that they are barely original) simply increases the chance that they might resemble other garments designed independently"

• The nature of some industries and the intended purpose of certain products can make it more difficult to succeed in an infringement action. The combination of the fast-moving nature of fashion and the shape limitations of the human body mean there arguably a limit as to how 'original' designs can be, making precision in describing designs even more important.

Conclusion

The nature of 'fast fashion' may mean that certain designers focus less on protecting their designs, so they can invest their time staying ahead of emerging trends.

However, when UKUDR arises automatically and lasts for three years (without any requirement to apply for registration), it is the perfect protection against imitators if you can get your portfolio in order.

Easy wins for IP-savvy designers include:

• Keeping records (designs, drawings, or even photographs) during the design process to see the development and introduction of features – most important when you get to the "final" design – as this will help with proving originality and clarifying the scope of your design protection
• Keeping your designs confidential (important if you have overseas manufacturing) until you are ready to launch in the UK, to ensure you qualify for UKUDR protection
• Logging evidence of where an imitator might have had access to your design (as "copying" is required to UKUDR infringement), and
• Swiftly taking action against imitators – although the limitation period is six years, it is hardly proportionate to wait, given the length of protection is three years. Excessive delay could impact upon recovery in compensation.

Still, if your product is a commercial success in the first 12 months of public launch, you may want to consider registering your design.

For these purposes, you would need clear illustrations of your design (line drawings, CAD images and/or photographs) – so there is less flexibility in arguing the "scope" of protection compared with UKUDR. However, the clear benefit is that registered designs can have up to 25 years' protection.

It is interesting to note that the world of fashion has also seen the emergence of designers applying to protect their signature products as 3D trade marks which, if successful, have the potential to give perpetual protection.

So, if you get the early steps right, and effectively preserve and enforce protection around your designs, you could end up with a much more robust portfolio.

Sources

[1] [2025] EWHC 805 (IPEC)