The Intellectual Property Enterprise Court's April 3 judgment in Edwards v. Boohoo.com U.K. Ltd. spotlights the ongoing tensions between independent designers and fast-fashion giants, particularly in the context of unregistered design rights.[1]
While the case ended in defeat for fashion designer Sonia Edwards, it illustrates the challenges that claimants face when attempting to enforce unregistered design rights in an era dominated by fast turnaround fashion and online inspiration.
Background
Edwards, an independent fashion designer, brought a claim in the IPEC against Boohoo and associated entities, alleging they had infringed her U.K. unregistered design rights, or UKUDR, in five garments: a multiway bikini, puffy sleeves, two types of ruched skirts and ruched leggings.
Edwards claimed that Boohoo had copied her original designs, which she promoted via social media. Boohoo, however, denied copying and claimed independent creation, arguing their designers were reflecting current fashion trends rather than appropriating Edwards' work.
Key Points
Subsistence
One of the major difficulties in a UKUDR claim is establishing the subsistence of the right itself. As such, a key hurdle in the case was evidencing that Edwards' designs subsisted under UKUDR. In assessing this point, the IPEC noted the overarching points are as follows:
- The "[d]esign right ... does not subsist in ... a principle of construction ... or ... surface decoration."
- A design "is a physical manifestation of an idea, not some underlying" concept.
- Clothing designs do not include "any aspects which are materially influenced by the shape of the individual wearing them."
- Design protection is limited to the "whole or part of the article and prevents claimants from cherry picking certain features from a design."
In evidencing subsistence of the UKUDR, Edwards relied on photographs of the articles made, rather than formal design documents. While the IPEC accepted that Edwards was entitled to rely on photographic evidence of the articles made to establish design subsistence, it also pointed out several limitations of this approach.
Limitations
- Lack of Specificity: As photographs do not show precise dimensions or configurations, this leaves the designs open to interpretation. Edwards' claim was therefore vulnerable to attack from the defendants, who argued the photographs merely depicted the concept of a design, rather than the specific shape or configuration of a design. Photographs do not provide useful specifics to rely on the usual "telltale indications of copying," according to the IPEC.
- Subjective Descriptors: When assessing the length of the puffy sleeves, Edwards used the reference points "under the elbow" and "past the wrist," which were subjective and variable. The IPEC found that this "[yielded] an impermissible degree of protection." Precise measurements provided in a design document would have alleviated these concerns.
- Incomplete Depiction: Since UKUDR only protects visible features, photographs failing to show a garment from all angles limited the scope of what could be protected.
- Idea Versus Expression: U.K. design law protects the specific expression of a design, not the general idea. Boohoo argued that the photographs failed to pinpoint the exact expression of a particular idea. A design document, on the other hand, is a clear expression of an idea. These limitations made it harder to pin down what precisely Edwards was claiming as protectable and made it easier for Boohoo to argue that its designs were different.
UKUDR in the Garments
Multiway Bikini Top
The IPEC determined this design was originally created in 2011, not 2016 as the claimant asserted. As such, any UKUDR already expired prior to the alleged infringement.
In addition, the court found that Edwards failed to establish originality in her 2016 multiway bikini design. The garment was configured differently when worn, but off the body its shape was identical to the 2011 version. As such, the IPEC ruled the design lacked the necessary originality to create a new right in any event.
Puff Sleeve Top
A narrow design right subsisted in a puffed sleeve connected to an extended cuff. Despite this, only one of Boohoo's garments showed sufficient similarity, and the court found no proof that it had been copied from Edwards' design.
Ruched Skirts and Ruched Leggings
Although these garments featured some original elements, such as chevron waistbands and central ruching, the IPEC considered the scope of protection to be narrow. No evidence of copying was established. The judge emphasized that such features were common within body conscious, or bodycon, fashion and could plausibly have been developed independently.
Copying: Proving Access and Imitation
Edwards' inability to prove that Boohoo had directly copied her designs proved to be the greatest barrier to this claim. Unlike registered designs or trademarks, unregistered design rights do not grant a monopoly right, meaning the claimant must establish that copying occurred.
Boohoo successfully argued independent creation, relying on current fashion trends and creative collaboration with celebrities such as supermodel Winnie Harlow. The court also took note of the limited reach of Edwards' Instagram presence — just 268 followers in 2020 — concluding that Boohoo's design teams were unlikely to have encountered her work. The lapse in time between publication of Edwards' designs and Boohoo's alleged copies also worked in the defendants' favor.
The judgment emphasized that similarities alone are not enough, particularly where the article in question is of low originality: There must be proof that the alleged infringer had access to the original work and copied it. Edwards failed to provide persuasive evidence that her designs had been viewed or copied by the designers at Boohoo. Ultimately, the similar designs were found to be merely coincidental.
The IPEC Advantage
Procedurally, the case is a reminder of the utility of the IPEC. Designed for efficient and cost-effective resolution of IP disputes, the IPEC fast-tracked this matter.
The hearing was held in January 2025, with judgment delivered in April, which is significantly faster than standard High Court timelines. The IPEC has once again proven its commercial utility for those looking for a timely decision.
Lessons for Designers and Brands
Edwards v. Boohoo underlines the delicate balance between inspiration and imitation in fashion, especially where legal protections like UKUDR depend on specificity, originality and proof of copying. For designers seeking to protect their creative output, the case teaches the value of robust documentation and the importance of understanding the limits of unregistered rights.
Key lessons for both independent designers and fashion brands include the following:
Design documentation matters.
While not legally required, formal design documents provide clarity and specificity that can strengthen UKUDR claims. They remove ambiguity and make it easier to demonstrate the exact expression of a design.
Evidence the design journey.
To better defend against allegations of copying, in-house counsel of major fashion brands should encourage their design teams to evidence the design journey, possibly through a trend board as Boohoo did in this case.
Register your design rights wherever possible.
Registered design rights provide stronger protection and don't require proof of copying. They offer a clearer, more easily enforceable right, which is especially useful when pursuing claims against large retailers.
Timing is key.
Delay between publication and alleged infringement can undermine a claim. Equally, failing to act before rights expire can fatally weaken a case.
Social media exposure isn't always enough.
Even if a design has been posted online or mentioned in the press, that does not necessarily establish that an alleged infringer had access to it.
Use the IPEC strategically.
For IP disputes involving claims under £500,000 ($676,015), the IPEC remains an efficient venue that can reduce costs and time spent on the litigation. But litigants must be prepared to present clear, concise and well-documented evidence within its procedural limits.
Originally published by Law360.
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