The UK IP Enterprise Court has ruled that an Austrian shoe company infringed a registered community design (“RCD”) held by a US-based sustainable fashion brand although there was no infringement of the corresponding unregistered community design (“UCD”). The decision is a relatively rare example of a UK, or EU, based Court analyzing fashion items and addressing design novelty issues between 2017 and now. A full copy of the decision can be found here.

Background

Rothy’s, a California-based brand, launched its “pointed loafer” (the “Loafer“) (see table 1 below) in November 2017. This was a “ballerina-style” shoe made of knitted material and recycled plastic. Giesswein, an Austrian company, started marketing its “pointy flat” (the “Flat”) range of ballerina-style shoes in April 2019 (see table 1 below). The upper parts of these shoes were made of a knitted meshwork fabric, and also sourced from recycled plastic.

Table 1

Rothy’s Loafer	Giesswein’s Flat

In July 2019, Rothy’s issued proceedings in the UK claiming that  Giesswein’s Flat infringed two of its EU design rights, an RCD (see table 2) and a UCD (see table 3).

Table 2

Rothy’s RCD includes seven views (the maximum allowed by the European Intellectual Property Office)

Table 3

Rothy’s UCD – this was derived from disclosure of images of the Loafer on various social media platforms such as Facebook and Instagram, in emails sent to people based in the EU and on its own website. Some of the images are excerpted in this table.

In response, Giesswein counterclaimed for the invalidity of Rothy’s RCD and UCD, claiming they were imitative of two of its earlier designs (the “Previous Designs“) (see table 4).

Giesswein’s “Allegra K” shoe	Giesswein’s “Bonnibel” shoe

Legal Analysis

Validity of RCD and UCD

The court dismissed Giesswein’s counterclaim that the RCD and UCD should be invalidated due to similarities to the Previous Designs, on the basis the Previous Designs produced “different overall impressions on the informed user.”

When considering the validity of the RCD, the Court considered the fact that the Allegra K had a higher heel, was made of a different material, and did not feature a counterline. In particular, the informed user, “who is aware of particular shoe designs and pays a high degree of attention” would notice the difference in material compared to the RCD. The difference in material between the Bonnibel and the RCD was also a key factor in the Court finding it produced a different overall impression. The court stated that for either of the Previous Designs to invalidate the RCD, “the RCD would have to be described at an unacceptable level of generality – such as a pointed-toe, slipper-cut ballerina shoe made of a fabric with some texture.” This was not what the RCD portrayed.

When considering the validity of the UCD, the Court simply stated neither of the Previous Designs created the same overall impression on the informed user, having considered the most salient points when determining the validity of the RCD.

The Valid RCD Was Infringed

The parties agreed Rothy’s was the first fashion brand to introduce ballerina shoes made of knitted yarn, sourced from recycled plastic. However, Giesswein argued the company had not infringed the earlier design on the basis the disputed RCD displayed a “regular, generally square pattern”, that implied a “woven” rather than a “knitted”, textile. 

The Court, however, held that it was clear the shoe showed “a knitted fabric.” The informed user would not be aware fabrics knitted from a heavy thread had been applied to ballerina shoes, notwithstanding their known used in gym shoes and sneakers. While the RCD and the Flat had some differences, they would not create a different overall impression to the informed user. The Court therefore concluded Giesswein’s Flat infringed Rothy’s RCD.

The Valid UCD Was Not Infringed

When considering the status of the UCD, the court held that Rothy’s claim Giesswein had unconsciously copied its UCD was “far-fetched.” In reaching this decision, the court considered the following factors:

• Rothy’s Loafer was a short-run product, only available on its website for a comparatively short period of time; and

• Giesswein’s Flat was created by a designer who “may be reasonably thought not to be familiar” with the Loafer.

As a result, the court held that Giesswein had not infringed Rothy’s UCD.

Conclusion

While the specifics of the case are of interest as they allow insight into a Court’s analytical process when deciding if an RCD or a UCD is infringed, more broadly designers concerned about “accidental” infringement can take heart from the court’s conclusions in regards to the UCD. Designers who are exposed to numerous items on a daily basis should not fear being found to infringe on a previous design if they happen to independently come up with something similar. However, the broader protection of RCDs should still be a relevant consideration and clearance searches conducted.

Additionally, the decision is a reminder of the utility of registered design rights in a portfolio as the broader protection afforded can enable infringement action when unregistered designs may otherwise fail.

Finally, whilst this decision was decided before the conclusion of the Brexit transition period, it is worth noting that RCDs and UCDs that existed in the EU before the finalisation of the UK leaving the EU will continue to be protected in the UK as re-registered designs, continuing unregistered designs or supplementary unregistered designs.