3 February 2021
Brands update – February 2021 – 2 of 3 Insights
In a recent IPEC case, the Court considered the validity and infringement of a Registered Community Design (RCD) and Unregistered Community Design (UCD) in "ballerina" shoes.
The Claimant, Rothy's Inc, a California-based ballerina shoe company, was the owner of a valid RCD and UCD in its "pointed loafer" shoe. The Claimant's pointed loafer was a significant departure from the prior art. This was particularly so given the different material used for the upper part of the pointed loafer.
The Defendant, Giesswein Walkwaren AG, an Austrian shoe company that marketed and sold a ballerina shoe known as the "pointy flat", had infringed the Claimant's RCD but not its UCD. Importantly, there had been no copying of the UCD even though the Defendant had taken inspiration from other (similar) shoe designs produced by the Claimant.
The Court found that both the RCD and UCD were valid, but only the RCD was infringed. This is not unusual, since a UCD is only infringed if there is "copying" (whereas an RCD is infringed whether there is copying or not).
On the facts, the Defendant had not copied the pointed loafer in coming up with the pointy flat. While the Defendant had purchased a number of the Claimant's shoes and taken inspiration from them in the creation of the pointy flat, it had not purchased the pointy loafer in issue. The evidence – including the Defendant's designer's attendance at design meetings, independent research, disclosure of design sketches and prototypes – suggested there was independent creation.
This is a useful reminder that there is no infringement of a UCD if a designer independently comes up with a closely similar design. This is seemingly the case even if the designer takes inspiration from other (similar) products produced by the Claimant.
The case also emphasises the importance of securing registered design protection for key designs. Not only does registration give a longer term of protection but copying is not required for infringement.
This decision was issued before the end of the Brexit transition period, so the RCD and UCD in question still covered the UK. It's worth remembering that these rights will continue to be protected in the UK after the end of the Brexit transition period as a re-registered design and continuing UCD (until the corresponding RCD and UCD expire).
Regarding validity, it was common ground that novelty and individual character were to be assessed from the date the RCD was filed and the UCD was first disclosed in the EEA (the Relevant Date was taken as 10 May 2017, which was the date the design corpus was assessed).
The informed user (applying the test from Samsung v Apple) is the user of the product in which the design is intended to be incorporated (ballerina shoes) and the relevant sector is ballerina shoes for women. The designer of ballerina shoes has a wide degree of freedom in developing the design – the design corpus shows that ballerina shoes differ in shape, texture, colours and materials.
The two prior designs considered by the Court (the Allegra K and Bonnibel shoes, both types of "pointy loafers") were held to create different overall impressions on the informed user to the Claimant's shoe design; among other things, the Court gave weight to the difference in the heel and the difference in the material of the upper part of the ballerina shoe. The validity attack on the RCD therefore failed.
Although counsel for the parties took the Court through a history of shoe design and "anatomy of a ballerina shoe", including adducing evidence from witnesses of fact and expert (which the Court was not bound by in coming to its conclusions on validity and infringement), Deputy Judge Stone emphasised the famous dicta from Trunki, that the most important things in determining an RCD case are:
Concerning infringement of the RCD, the Court needed to "look forward" from the RCD (registered in seven views at the EUIPO) to the allegedly infringing product. The Court was mindful of the very large degree of design freedom in ballerina shoe design in the design corpus, which makes a finding of infringement more likely. Ballerina shoes can be (and have been) designed in any number of ways – small differences between an RCD and the Defendant's design in a design corpus with large design freedom are less likely to be sufficient to escape infringement.
There are undoubtedly differences between the RCD and the pointy flat (eg the gradation between the heel and main sole, and the difference in the tongue and curvature of the heel), but when the informed user steps back and forms an "overall impression" that impression is the same. The differences in some measurements of the shoes will be noticed by the informed user, but not to such an extent as to create a different overall impression. Therefore, the pointy flat infringes the Claimant's RCD.
The UCD was held to be valid over the prior art on the same basis as the RCD.
Interestingly, UCD was claimed in the whole of the Claimant's pointed loafer shoe. It is unclear why it was not also claimed in parts thereof. Perhaps the Claimant was concerned that only the design of the pointed loafer as a whole had the necessary validity. The Court held that the Defendant's pointy flat and the Claimant's UCD gave the "same overall impression" on the informed user. The key question was whether there had been copying of the UCD.
The Court was provided with evidence relating to the creation of the Defendant's pointy flat and found that (on the basis of the Claimant's designer's attendance at design meetings, independent research, disclosure of design sketches and prototypes) the Defendant's pointy flat was the product of independent creation and not copying.
It's interesting to note that throughout the whole of the Defendant's design process, the Defendant had samples of the Claimant's shoes, but importantly not the Claimant's pointed loafer (the shoe in issue). The Defendant had purchased the Claimant's shoes (the "flat", "point" and "loafer", but not the "pointy loafer" in issue). The Claimant's shoes were thoroughly analysed and used throughout the Defendant's design process to come up with the pointy flat. The Defendant's designers claimed never to have seen the Claimant's pointed loafer so could not have copied it. They took inspiration from at least three of the Claimant's similar designs.
The Claimant's submission of "unconscious copying" was far-fetched in the Court's opinion. The Court held that there had been no copying so the UCD infringement claim failed.
To discuss any of the issues raised in this article in more detail, please reach out to a member of our Brands & Advertising or Patents & Innovation teams.
by Multiple authors