Rothy’s v Giesswein – English Court leaves a lasting mark on EU Community design rights

January 21, 2021

In what is likely to be the final judgment of an English Court as a Community Design Court, the Intellectual Property Enterprise Court (“IPEC”) has ruled that Austrian shoe manufacturer Giesswein infringed the registered Community Design right of Californian-based shoe manufacturer Rothy’s Inc (“Rothy’s”) in relation to a new design of ballet flat shoe.

Key Takeaways

  • Although the case did not set any ground-breaking developments, it provides a very useful outline of the established legal principles for many of the questions which arise in registered and unregistered community design infringement and validity cases. Barring an unforeseen and unlikely deviation from these principles moving forward, they will remain applicable to UK registered and unregistered cases where, in the most part, the law will continue to mirror that as it was prior to Brexit.

  • From a practical perspective however, the case provides a very useful reminder of the advantages of filing sufficiently detailed and high quality drawings with the UKIPO and the EUIPO when seeking to register designs, especially where aspects of those designs relate to a precise feature (such as the heavy knitted fabric in this case). It also reminds parties of the importance of proportionality in the IPEC and alerts them to the inevitably negative cost consequences that will flow should they seek to expand unnecessarily the remit of expert evidence.

Background to the case

Founded in 2012, Rothy’s retails shoes and handbags. All of its items are made from recycled water bottles and other post-consumer recycled materials. In 2017, Rothy’s launched a knitted ballet flat shoe named “The Pointed Loafer” (made of knitted yarn from recycled plastic). As alluded to by its name, The Pointed Loafer is a ballet flat shoe with a pointed toe and a protruding tongue which provides the appearance of a loafer, as shown at right:

Rothy’s also registered The Pointed Loafer as a Community design (a “RCD”) with the European Union Intellectual Property Office (“EUIPO”), relying on the below images:  

Rothy’s also claimed unregistered community design right in the Pointed Loafer (“UCD”) on the basis of images of the Pointed Loafer on Rothy’s website, in emails sent to individuals in the EU and on social media sites, including Facebook and Instagram.

Giesswein is a company founded in Austria which specialises in the sale of footwear made from wool. In 2019, Giesswein released a range of ballet flat shoes, the upper aspects of which were in a knitted meshwork fabric made from recycled plastic. One of the shoes in that range was called the “The Pointy Flat”, as shown below:

Rothy’s issued proceedings in the IPEC alleging that Giesswein’s “The Pointy Flat” infringed both Rothy’s RCD and UCD for The Pointed Loafer (the RCD and UCD for The Pointed Loafer being together the “Designs”). In return, Giesswein counterclaimed that the Designs were invalid based on two third party prior designs (the “Third Party Designs”). 

As an interesting aside, the trial took place on 16 and 17 November 2020. Given the end of the Brexit transition period on 31 December 2020, and the inability of an English Court to sit as a Community Court thereafter (with the resulting inability to impose EU wide sanctions such as an injunction), the judgment was prepared on an expedited basis so that an order could be in place prior to 31 December 2020.

Key questions for the Court

The validity of the RCD and UCD in The Pointed Loafer

Both a registered Community design right and an unregistered Community design right will be valid if they are new (in that no identical design has previously been made available to the public) and possess individual character (in that it must give a different overall impression to the “informed user” compared to any design previously made available to the public). As there was no question that the Designs were new, the Court had to assess solely whether the Designs produced a different overall impression on the informed user than the Third Party Designs. An important point to note is that in Community registered design cases, such assessment is based primarily on a comparison of the RCD as registered (i.e. the images included in the RCD) and the prior art (in this case the Third Party Designs), although a Court can also look at the product which is made to the RCD (in this case The Pointed Loafer) “for illustrative purposes in order to confirm the conclusions already drawn”. 

The parties and the Court agreed that the informed user in this case was a user of ballerina shoes, not a designer, technical expert, manufacturer or seller. Donning the spectacles of such an informed user, the Court held that the Designs produced a different overall impression to both of the Third Party Designs, in significant part because of the material used (although it was accepted that it was not apparent from the RCD that the knitted thread used is made from recycled plastic, it was obvious that it was a heavy thread which differed from that on the Third Party Designs). As such, the invalidity claim against the Designs was rejected by the Court.

Was the RCD infringed by the Pointy Flat?

The test for infringement of a Community registered design requires an assessment of the community registered design and the defendant’s product (in this case, The Pointy Flat) to determine whether the defendant’s product produces a different overall impression on the informed user compared to the Community registered design (using the drawings from the RCD). However, as with the validity assessment, the Court is permitted to compare the actual products involved “for illustrative purposes in order to confirm the conclusions already drawn”.

Although the judge accepted there were some differences between the RCD for The Pointed Loafer and The Pointy Flat, he held that “when the informed user steps back and forms an overall impression, that overall impression is…the same”. The most significant factor for the judge in reaching this conclusion was that both the RCD (which benefited from being sufficiently graphically detailed, especially when viewed close up, that they indicated a knitted fabric) and the Pointy Flat had uppers knitted from a heavy thread and, since this was a departure for ballet flats, this would be especially striking to the informed user. Consequently, The Pointy Flat infringed the RCD for The Pointed Loafer.

Was the UCD infringed by the Pointy Flat? 

The law on infringement of unregistered Community designs is very similar to that in respect of registered Community designs. One of the few differences, pertinent in this case, is the requirement to prove copying of the unregistered design by the defendant.

Although the three individuals responsible for designing the Pointy Flat had sample pairs of Rothy’s shoes throughout the design period of the Pointy Flat (and Giesswein’s CEO had purchased several pairs of Rothy’s shoes during that design period), importantly, none of those samples were The Pointed Loafer (they were previous ballet flat designs sold by Rothy’s made of heavy knitted yarn). The Court accepted that those three individuals had no access to the Pointed Loafer (either physically or online, where it had been available on the Rothy’s website for a short time as a limited edition product) during the design of The Pointy Flat. The Court found accordingly that there had been no copying and the claim for unregistered Community design right infringement therefore failed.

Expert evidence and costs 

In a pre trial order, the Court had permitted each party to adduce evidence from a single expert in respect solely of the state of the design corpus as at 10 May 2017 (the priority date for the RCD of The Pointed Loafer). In granting this order, the Court rejected the request from the Claimant that expert evidence be provided on overall impression and individual character (i.e. issues relating to a visual comparison between the designs). Ultimately, and in breach of that pre trial order, both parties provided expert evidence which pertained to overall impression and individual character. This then led to correspondence between the parties (with each side alleging that the other side’s expert evidence was inadmissible) further pre trial applications and further evidence. 

This approach led to a stern rebuke from the Judge. Firstly, he reiterated the Courts’ long established view that expert evidence in design cases (which frequently involve consumer products) in respect of visual matters (as opposed to technical matters) is unlikely to be of much assistance and leads to unnecessary costs. He then criticised the disproportionate costs of expert evidence in this case and held that as both parties had conceded that the issues relating to visual comparisons were all matters for the Courts, this could have been addressed in a more timely and cost efficient manner by an agreed, brief primer between the parties rather than expert evidence. The Judge stressed that this was especially applicable in cases before the IPEC where a successful party can only recover a maximum of £50,000 in costs and proportionality is a fundamental guiding principal.  

The images included in this OnPoint are from the approved judgment in this case.

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