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  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]