23 Feb Pointed Loafer design infringement case
Rothy’s Inc. v. Giesswein Walkwaren [2020] – IPEC decision
This case has the distinct privilege of being the last to be held at the Intellectual Property Enterprise Court – IPEC (sitting as a Community Design Court) before the end of the Brexit Transition Period, which ended at 11pm UK time on 31 December 2020. The proceedings concerned the infringement of a ballerina shoe protected by both Registered Community Design (RCD) and Unregistered Community Design (UCD) rights and demonstrates how the test for each right in the same product can give rise to different outcomes. The case also considered the role of expert witnesses in intellectual property proceedings.
Background
Rothy’s Inc (“Rothy’s”), a US-based shoes and accessories company, with eco-friendly and sustainability credentials, brought proceedings against the defendant, Giesswein Walkwaren AG (“Giesswein), an Austrian shoe company for infringement of Rothy’s ballerina shoe design.
Rothy’s protected design Giesswein’s allegedly infringing shoe
In April 2019, Giesswein started marketing on its website its Pointy Flat ballerina shoes made of a knitted, mesh fabric made from recycled plastic. Rothy’s claimed that Giesswein had infringed their Pointed Loafer ballerina shoe that was protected by an RCD with a priority date of 10 May 2017 as well as by UDC rights arising from its first disclosure in the EU on 24 November 2017. Giesswein countered that Rothy’s RCD and UCD rights were invalid for lack of individual character on the basis of two prior designs: Allegra K and Bonnibel:
Allegra K Bonnibel
The parties were permitted to adduce a single expert witness to solely deal with the state of the design corpus as at 10 May 2017. However, both expert witnesses gave evidence on the interpretation of the RCD, the identity of the informed user as well as on the overall impression produced on the informed user by the designs and shoes, which counsel for both parties agreed were matters for the court. The judge therefore admitted the expert evidence relevant to determining the state of the design corpus but gave no weight to the evidence in relation to the issues to be determined by the court. Furthermore, the judge cautioned that as the evidence relating to the design corpus was almost entirely agreed by the parties, significant costs could have been saved by submitting only written evidence, without the need for cross-examination and the additional court time required.
Invalidity of the RCD
A design will be protected by Community design if it is new and has individual character. The RCD would be declared invalid if at the 10 May 2017, the two prior designs identified by the Giesswein formed part of the design corpus. The judge therefore had to consider whether the RCD produced a different overall impression on the informed user than that of the two prior designs, respectively.
It was agreed that the informed user in this case was a user of ballerina shoes, not a designer, technical expert, manufacturer or seller. Who is particularly observant, knowledgeable of the design corpus and the design features normally found in the design of ballerina shoes. She is interested and shows a relatively high degree of attention. She neither observes minimal differences in detail, nor does she merely perceive the designs as a whole. She conducts a direct comparison of the design with the relevant product (the prior design or the allegedly infringing design).
Much turned on the surface appearance of the upper shoe depicted in the RCD drawings. The judge accepted that the RCD showed a knitted fabric made from a comparatively heavy thread. It was clear from the evidence of both experts that the knitted upper of the RCD and the UCD would strike the informed user as unusual and was therefore a departure from the design corpus. The knitted upper was the common feature that distinguished both prior designs from the RCD. The judge therefore found that when comparing both the Allegra K and the Bonnibel with the RCD, the knitted fabric produced a different overall impression on the informed user. The counterclaim for invalidity was consequently rejected.
Infringement of the RCD and UCD
The judge considered whether the drawings of the RCD produced a different overall impression on the informed user to that of the allegedly infringing product, the Pointy Flat. Following the same reasoning as the invalidity claim, the judged concluded that as the knitted fabric of the upper of the RCD would be considered unusual to the informed user, the Pointy flat which itself comprised a similar material made from a heavy knitted thread, produced the same overall impression on the informed user as the RCD, thereby infringing the RCD.
In relation to the infringement of the UCD, Rothy’s had to show not only that the Giesswein’s Pointy Flat produced the same overall impression on the informed user as the unregistered Community design in the Pointed Loafer, but also that Giesswein had indeed copied it.
Rothy’s submitted that their Pointed Loafer was first disclosed in the EU on Black Friday, 24 November 2017 simultaneously via their website, a publicity email and via social media (Instagram and Facebook), which was not disputed. Giesswein denied copying the UCD and argued that its Pointy Flat ballerina shoe was the result of an independent creation between the Giesswein brothers (owners of the Austrian shoe company) and their main designer.
The evidence showed that the brothers and their designer had consulted Rothy’s website on several occasions between 2018 and 2019, and that Markus Giesswein, one of the brothers, had purchased similar ballerina shoes from the claimant’s website, which were thoroughly analysed and used throughout the process of designing the Pointy Flat. However, Giesswein did not purchase the Pointed Loafer, which they argued they had never seen and therefore could not have copied it. Further, Rothy’s conceded that the Pointed Loafer was a limited-edition product and the evidence showed that it was not available on their website at the material time. The judge accepted Geisswein’s claim of an independent work of creation and concluded that although the defendant’s Pointy Loafer produced the same overall impression as the UCD, it was not copied from it but rather was the result of an independent design story. As there was no copying, there was no infringement of the UCD.
Similarly, due to the use of the heavy knitted yarn of Rothy’s ballerina shoe upper, which was the feature most likely to strike the informed user, the UCD was not invalid.
Comment
This decision highlights the need for design protection for limited-edition products that are available only for a short period of time. This is particularly relevant to the fashion and sports industries, where limited edition product lines reinforce their exclusivity.
The case also brings into focus the lower threshold for a finding of infringement of a registered design protection compared with the additional requirement of copying in order to prove infringement of an unregistered design. Accordingly, although the UCD no longer extends to the UK post-Brexit and has been replaced by the newly created UK Supplementary Unregistered Design (SUD) that mirrors the UCD, it is advisable for brand owners to consider registering their designs in either or both the UK and the EU and not to rely solely on automatic unregistered design rights (either UCD or SUD depending on where first disclosure occurs), even for fast-moving or limited-edition products.
For advice on design rights protection as well as on your intellectual property rights, please contact Yvonne Onomor at Elys IP.
