To The Point: Rothy's Inc v Giesswein Walkwaren AG

• Published date: 07 June 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Mathys & Squire
• Author: Max Thoma and Oliver Parish

In this article for Intellectual Property Magazine, Mathys & Squire associate Max Thoma and technical assistant Oliver Parish consider the importance of drawings in determining the scope of a registered design.

In this recent design case - Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) - before the Intellectual Property Enterprise Court (IPEC), the judge decided that the Austrian company Giesswein Walkwaren AG's "Pointy Flat" shoe infringed a Registered Community Design (RCD) held by the California-based fashion company Rothy's Inc.

Background

Rothy's claimed that Giesswein's knitted "Pointy Flat" shoe (pictured below) infringed its RCD (also pictured below) as well as its Unregistered Community Design (UCD) rights subsisting in its own knitted "Pointed Loafer" shoe. Both of the "Pointy Flat" and "Pointy Loafer" shoes were made of a knitted fabric.

Giesswein counterclaimed for invalidity of Rothy's RCD on the basis of two prior designs, the "Allegra K" and the "Bonnibel" shoes (pictured below). Both the "Allegra K" and the "Bonnibel" were made from suede (or variants thereof).

The Registered Community Design

The pivotal issue in dispute was how to interpret the fine black lines shown on the shoe upper in Rothy's RCD.

The defendant, Giesswein, argued that the black lines merely showed that the shoe is a three-dimensional shape, and that if the black lines did indicate any surface design feature, that feature was a textured appearance generally (including any knitted, woven or animal hide materials, but excluding smooth textures) rather than any specific material.

The claimant, Rothy's, encouraged the Judge to zoom in on the high-resolution digital images of the RCD which show that the black lines radiate in a circular pattern at the heel and toe of the shoe. Such a pattern, it was argued, is specifically indicative of a knitted fabric rather than a textured appearance more generally.

The judge agreed with the claimant, noting that certain aspects of the patterning of the lines were inconsistent with a woven fabric or unprinted animal hide such as nubuck or suede. The lines were therefore held to indicate a knitted fabric (such as that present in the "Pointy Flat" shoe), rather than any of the alternative textures suggested by the defendant.

The judge went on to find that, whilst knitted fabrics were known for shoe uppers on gym shoes and sneakers, the notional informed user would not be aware that they had been applied to the types of...