Community Designs: Rothy's Inc v Giesswein Walkwaren AG
Intellectual Property Enterprise Court (Mr David Stone) Rothy's Inc v Giesswein Walkwaren AG  EWHC 3391 (IPEC) (16 Dec 2020)
This is a case about the design of shoes which is more interesting than many of the other designs that have come before the courts recently. It is also possibly the last time an English court will have sat as a Community design court. Mr David Stone, who tried the case as a deputy judge of the High Court, remarked at paragraph  of his judgment that"As things currently stand, this Court will be unable to sit as a Community Design Court after 11pm UK time on 31 December 2020, given the current end date to the transition period following the UK's departure from the European Union."
At the case management conference His Honour Judge Hacon ordered the following issues to be tried:
"Design Corpus1. The state of the design corpus as at 10 May 2017.
2. Whether the RCD produces on the informed user a different overall impression from that produced by any of the designs of the Allegra K or Bonnibel.
3. Whether the Pointy Flat produces on the informed user the same overall impression as is produced by the RCD.
4. Whether the UCD was made available to the public within the Community by reason of the acts identified at paragraph 6 of the Particulars of Claim [that is, the publication on the Claimant's website, the emails, and the social media posts].
5. Whether any subsisting rights in the UCD are the property of the Claimant.
6. Whether the UCD produces on the informed user a different overall impression from that produced by any of the designs of the Allegra K or Bonnibel.
7. Whether the Pointy Flat is an article which has been made by copying the UCD.
8. Whether the Pointy Flat produces on the informed user the same overall impression as is produced by the UCD."
"The RCD and the UCD are not invalid. The Pointy Flat infringes the RCD. The Pointy Flat does not infringe the UCD. The Claimant succeeds on the RCD but not the UCD. The Defendant's counterclaim for invalidity fails."
"A design shall be protected by a Community design to the extent that it is new and has individual character."
"1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:
(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;
(b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration."
"The question for the Court, therefore, is whether the RCD produces a different overall impression on the informed user than the Allegra K and/or the Bonnibel. That simple question hides a dense thicket of further complexity.
"181. I here adapt the four-stages prescribed by the General Court in H&M Hennes for assessing the individual character of a Community design to the comparison of an RCD with an accused design, adding other matters relevant to the present case. The court must:
(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;
(2) Identify the informed user and having done so decide
(a) the degree of the informed user's awareness of the prior art and
(b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;
(3) Decide the designer's degree of freedom in developing his design;
(4) Assess the outcome of the comparison between the RCD and the contested design, taking into account
(a) the sector in question,
(b) the designer's degree of freedom, and
(c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public.
182. To this I would add:
(5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison.
(6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters."
i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46);
ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).
I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59)."
Referring to the following paragraphs of the judgment in Cantel, Mr Stone directed himself to take into account the difference of the RCD from the "design corpus":
". A registered Community design … which is markedly different from any member of the design corpus will confer protection of a scope greater than would be conferred by a RCD only incrementally different from a member of the design corpus, see P&G at [35(ii)].
. Designs which are strikingly new in every way will be unusual. More often some features will be commonly found in the design corpus, others not. In such a case the correct approach is to give little or no weight to common features. In Grupo Promer, the General Court said at :
'… in so far as similarities between the designs at issue relate to common features…, those similarities will have only minor importance in the overall impression produced by those designs on the informed user.'"
"(1) The relevant sector is shoes, and more particularly ballerina shoes for women;
(2) The informed user is a user of ballerina shoes, not a designer, technical expert, manufacturer or seller. She is particularly observant, knowledgeable of the design corpus and the design features normally found in the design of ballerina shoes. She is interested and shows a relatively high degree of attention. She neither observes minimal differences in detail, nor does she merely perceive the designs as a whole. She conducts a direct comparison of the design with the relevant product (the prior design or the allegedly infringing design).
(3) The designer of ballerina shoes has a very wide degree of freedom in developing the design - whilst the shoe must stay on the foot, and enable walking, the design corpus shows that ballerina shoes differ in shape, texture, colours and materials.
(5) There are no features of the RCD which are solely dictated by technical function and therefore to be ignored in the comparison."
Infringement of the RCD
"Whilst there are undoubtedly differences between the RCD and the Pointy Flat, when the informed user steps back and forms an overall impression, that overall impression is, in my judgment, the same."
"The law on unregistered Community designs is largely identical to that in relation to registered Community designs, other than in relation to three main issues:
(a) Creation: whereas registered Community designs arise by virtue of the act of registration by the EUIPO, unregistered Community designs arise by virtue of being disclosed for the first time within the territory of the European Union;
(b) Duration: registered Community designs can be renewed up to four times for a total period of 25 years whereas unregistered Community designs last for only 3 years; and
(c) Infringement: in addition to the allegedly infringing product's having to produce the same overall impression on the informed user as the unregistered Community design, copying must also be proved."
Mr Stone referred to art 19 of the Community Design Regulation:
"Rights conferred by the Community design
1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
2. An unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design.
The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder."
"(a) the onus of proving copying lies on the holder of the design right in issue;
(b) the onus of proving independent creation lies on the alleged infringer; and
(c) the onus of proving copying may be lightened or reversed, in accordance with the rules of national law, where it is otherwise likely to be impossible or excessively difficult to prove copying."
"the holder of a Community design registered and, where applicable, published following a deferral of publication in accordance with Council Regulation (EC) No 6/20021 shall become the holder of a registered design right in the United Kingdom for the same design."
Art 57 of the above-mentioned withdrawal agreement further provides:
"Continued protection in the United Kingdom of unregistered Community designs
The holder of a right in relation to an unregistered Community design which arose before the end of the transition period in accordance with Regulation (EC) No 6/2002 shall in relation to that unregistered Community design ipso iure become the holder of an enforceable intellectual property right in the United Kingdom, under the law of the United Kingdom, that affords the same level of protection as that provided for in Regulation (EC) No 6/2002. The term of protection of that right under the law of the United Kingdom shall be at least equal to the remaining period of protection of the corresponding unregistered Community design under Article 11 (1) of that Regulation."
The Community Design Regulation was incorporated into the laws of the UK with effect from 23:00 on 31 Dec 2020 by s.3 (1) of the European Union (Withdrawal) Act 2018. and amended by reg 3 and Part 1 of Sched 1 to The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 to create a new UK intellectual property right known as the "supplementary unregistered design". The supplementary unregistered design works in exactly the same way as the unregistered Community design. It, therefore, implements art 57 of the withdrawal agreement.
This case will continue to be relevant to registered designs and supplementary unregistered designs for the time being.
Anyone wishing to discuss this article or registered designs and supplementary unregistered designs generally may call me on 020 7404 5252 during office hours or send me a message through my contact form.