Rothy's Inc v Giesswein Walkwaren AG

In Community design cases, the court must interpret the registration from the images themselves and compare the overall impressions produced on the informed user. Common design features receive little weight, while an unusual departure from the design corpus may be significant. The informed user lies between the average consumer and a sectoral expert. Detailed expert evidence on visual comparison is generally unnecessary and may receive no weight. For an unregistered Community design, copying must be proved, although independent creation may provide the answer where the alleged infringer gives a coherent account. A product may be used illustratively to confirm an assessment, but cannot be used circularly to determine what the registration means.

Rothy’s Inc claimed that Giesswein Walkwaren AG’s Pointy Flat shoe infringed the claimant’s registered and unregistered Community designs for a knitted ballerina shoe. Giesswein counterclaimed for invalidity based on the Allegra K and Bonnibel shoes. The parties agreed the disclosure and ownership issues concerning the unregistered design. The central issues were the interpretation and validity of the registered design, whether the Pointy Flat produced the same overall impression, and whether it resulted from copying the unregistered design.

1. Registered design interpretation. The registration was interpreted from its images. The lines on the upper depicted knitted fabric made from comparatively heavy thread, and the parallel lines around the topline depicted a contrasting knitted edge. The court rejected reliance on the Pointed Loafer to determine the scope of the registration, since that would be circular. The United States priority patent was unnecessary to the conclusion.
2. Individual character and informed user. Applying the six-stage approach summarised in Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat), the relevant sector was women’s ballerina shoes. The informed user was observant and knowledgeable about the design corpus, but was neither a sectoral expert nor an average consumer. The designer had a very wide degree of freedom. Features dictated solely by technical function were absent. The informed user could attach different weight to features according to their practical significance and visibility in use.
3. The knitted heavy-thread upper was an unusual departure from the design corpus. Together with differences in heel, material and counterline, it meant that neither prior design produced the same overall impression as the registered design. The registered design was therefore valid.
4. The Pointy Flat shared the registered design’s pointed-toe slipper-cut form, low heel, counterline, tongue, gussets and knitted heavy-thread upper. Its differences in measurements, topline, sole, heel and branding would not strike the informed user sufficiently to create a different overall impression. It therefore infringed the registered design.
5. Unregistered design. Under Article 19(2), the claimant bore the burden of proving copying and the defendant could establish independent creation. The evidence showed a coherent independent design process based on other Rothy’s shoes, not the Pointed Loafer. The copying claim therefore failed. The Pointy Flat nevertheless produced the same overall impression as the unregistered design, and the unregistered design was valid, but there was no infringement.
6. The claimant succeeded on the registered design claim but failed on the unregistered design claim. The invalidity counterclaim failed.