Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020)

Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020)

The Registered Community Design (RCD) and Unregistered Community Design (UCD) for the Pointed Loafer are valid as they produce a different overall impression on the informed user compared to the prior designs (Allegra K and Bonnibel), primarily due to the distinctive knitted upper. The Defendant's Pointy Flat shoe produces the same overall impression as the RCD and UCD and therefore infringes both rights.

Citation
[2020] EWHC 3391 (IPEC)
Parties
Claimant: Rothy's Inc; Defendant: Giesswein Walkwaren AG
Jurisdiction
England and Wales
Judgment Date
16 December 2020
Procedural Posture
Intellectual Property (community Design Infringement and Invalidity) / Judgment After Remote Trial
Outcome
Claimant succeeds; Defendant's counterclaim for invalidity dismissed; Defendant found to have infringed RCD and UCD.
Legal Topics
Community Registered Design, Unregistered Community Design, Design Infringement, Design Invalidity, EU Regulation 6/2002, Design Corpus, Overall Impression, Informed User, Design Freedom
Intellectual Property Law Community Registered Design Unregistered Community Design Design Infringement Design Invalidity EU Regulation 6/2002 Design Corpus Overall Impression +2 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 8 Party arguments 2
Sign in to unlock

Parties

Rothy's Inc

Claimant

Giesswein Walkwaren AG

Defendant

Procedural Posture

Intellectual Property (community Design Infringement and Invalidity) / Judgment After Remote Trial

Legal Issues

  1. 1 Whether the Defendant's 'Pointy Flat' shoe infringes the Claimant's Registered Community Design (RCD) and Unregistered Community Design (UCD) for the 'Pointed Loafer'
  2. 2 Whether the RCD and UCD are invalid for lack of individual character over prior designs (Allegra K and Bonnibel)

Ratio Decidendi

The Registered Community Design (RCD) and Unregistered Community Design (UCD) for the Pointed Loafer are valid as they produce a different overall impression on the informed user compared to the prior designs (Allegra K and Bonnibel), primarily due to the distinctive knitted upper. The Defendant's Pointy Flat shoe produces the same overall impression as the RCD and UCD and therefore infringes both rights.

Court Disposition

Claimant succeeds; Defendant's counterclaim for invalidity dismissed; Defendant found to have infringed RCD and UCD.

Orders

  • Declaration of validity of the Claimant's RCD and UCD.
  • Declaration of infringement by the Defendant's Pointy Flat shoe.