The Authors' Take - Final decision from a UK Community Design Court clarifies how to interpret a registered design

Final decision from a UK Community Design Court clarifies how to interpret a registered design

by Darren Smyth

The decision in Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020) relates to a design for ballerina shoes, which an informal, women's slip-on shoe, with a relatively thin, flexible sole and a wide, low heel. This decision is the last judgment handed down by a UK court acting as a Community Design Court. David Stone, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, was faced with the task of construing what was protected as the Registered Community Design.

The key feature of the shoe which the Claimant developed was that the upper was made of knitted yarn made from recycled plastic. However, the Defendant denied that the cross-hatching in the images of the designs indicated a knitted meshwork fabric.

In determining what constitutes the claimed design, the judge rejected the submission of the Claimant that he should take into account a shoe made to the design. This would clearly risk introducing features extraneous to those claimed in the registration. As the judge pointed out, whilst superficially attractive, this argument is circular – to determine if the proffered shoe is indeed a shoe made to the design, one first needs to assess what the registration means.

The judge also rejected the submission of the Claimant that he should consider the description of the claimed design in the US design patent application from which priority was claimed. It cannot be correct to import subject matter from a priority application in this manner, in particular when the effect would be to circumvent Article 36(6) of the Community Design Regulation which stipulates that the description of a RCD does not affect the scope of protection.

This leaves only the images of the registered design to define what is claimed in the registration. The judge scrutinised closeups of the images on the EU IPO website, and concluded that the patterning shown on the upper depicts a knitted fabric. This led to the conclusion that the RCD possessed individual character, as neither of the pleaded prior designs had knitted uppers (both were suede).

The differences between the Defendant’s shoe and what the judge construed as being protected by the RCD (such as a tab at the back of the shoe and a decorative button) were held to be minor, so the Defendant’s shoe was held to infringe the RCD.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer

The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer

by Matthias Leistner

In November and December 2020, the EU Commission has presented a triad of proposals concerning data governance, the regulation of gatekeepers in digital markets and the regulation of digital services (namely including an ambitious, yet considerate, reform of provider liability in Europe as well as the introduction of certain duties of diligence in particular for very large platforms). Specifically, this Digital Services Package respectively comprises a proposed Data Governance Act (DGA), Digital Markets Act (DMA) and Digital Services Act (DSA). Altogether, these bills represent the hitherto most ambitious and broad regulatory project in the field of data and digital services regulation worldwide.

While the (rather heterogeneous) DGA as well as the DSA will also have to be critically discussed in detail (and partly are in the paper), immediate attention has to be paid to the fundamentals of the DMA Proposal, namely, the necessary discussion of its legal basis, objective and context. To put it in a nutshell, the Proposal represents a hybrid approach to specific regulation of gatekeeper platforms, which comprises prominent elements of competition law as well as certain elements of unfair practices regulation and some other objectives (such as the efficient enforcement of certain rights relating to protection of personal data). Taken together, most of this makes perfect sense as a European Magna Carta for businesses’ and customers’ competitive freedoms vis-à-vis core platform intermediary and infrastructural services. Practically, in its current form, the proposal would effectively apply to the GAFAM-companies and a handful of further gatekeeper platforms.

However, notwithstanding the substantive competition law elements within this regulatory approach, the Proposal is only based on Art. 114 TFEU as an instrument of internal market harmonization. Against this background, presently, the main fundamental weakness of the Proposal concerns the integration in the context of or at least a more specific co-ordination with European and national competition law. This has practical consequences since sufficiently consistent and specific provisions on coordinating public enforcement of the Commission on the one hand and of the Member States’ authorities (in particular on the additional basis of competition law) on the other are lacking in the Proposal. In fact, this latter more practical aspect is partly linked to the former more fundamental aspect, since contextual integration in the realm of competition law (and consequently the use of Art. 103 TFEU as an additional basis for the Proposal) would allow to make use of the European Competition Network under Regulation 1/2003 for the public enforcement of the DMA Proposal’s provisions in order to efficiently coordinate EU and national enforcement, based on both, the DMA Proposal and EU or national competition law. Apart from that, a European legal framework for private remedies and enforcement in regard to the obligations laid down in the Proposal seems of paramount importance, since otherwise there is a considerable danger of disharmonization and inefficiency in regard to diverse or lacking private remedies according to the different Member States’ respective national contract, tort and unfair competition laws.

Make no mistake: The Magna Carta in many ways was a document of the weakness of King John of England in enforcement of his power against the rebel barons. Issues of public and private enforcement will also be the crucial tie-breakers for making the DMA Proposal a future success in practice – thus they should be addressed comprehensively from the start.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]