Rothy's Inc v Giesswein Walkwaren AG

Rothy's Inc v Giesswein Walkwaren AG

The Defendant's Pointy Flat shoe infringes the Claimant's Registered Community Design because it produces the same overall impression on the informed user, particularly due to the use of a knitted heavy yarn upper, which was a significant departure from the design corpus. The RCD and UCD are valid as they produce a different overall impression from the prior designs. However, the Defendant did not copy the UCD, as the evidence showed independent creation and no access to the Pointed Loafer, so the UCD was not infringed.

Parties
Claimant: Rothy’s Inc; Defendant: Giesswein Walkwaren AG
Jurisdiction
England and Wales
Judgment Date
16 December 2020
Procedural Posture
Intellectual Property/design Infringement and Invalidity Claim / Judgment After Remote Trial
Outcome
Claimant succeeds in part; Defendant's counterclaim dismissed
Legal Topics
Registered Community Design (rcd) Infringement, Unregistered Community Design (ucd) Infringement, Design Invalidity, Design Corpus, Copying in Design Law
Intellectual Property Design Law Registered Community Design (rcd) Infringement Unregistered Community Design (ucd) Infringement Design Invalidity Design Corpus Copying in Design Law

Case Brief

Summary, issues, holding and outcome

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Parties

Rothy’s Inc

Claimant

Giesswein Walkwaren AG

Defendant

Procedural Posture

Intellectual Property/design Infringement and Invalidity Claim / Judgment After Remote Trial

Legal Issues

  1. 1 Whether the Defendant's Pointy Flat shoe infringes the Claimant's Registered Community Design (RCD) and/or Unregistered Community Design (UCD)
  2. 2 Whether the RCD and UCD are invalid for lack of individual character over prior designs (Allegra K and Bonnibel)
  3. 3 Whether the Defendant copied the UCD

Ratio Decidendi

The Defendant's Pointy Flat shoe infringes the Claimant's Registered Community Design because it produces the same overall impression on the informed user, particularly due to the use of a knitted heavy yarn upper, which was a significant departure from the design corpus. The RCD and UCD are valid as they produce a different overall impression from the prior designs. However, the Defendant did not copy the UCD, as the evidence showed independent creation and no access to the Pointed Loafer, so the UCD was not infringed.

Court Disposition

Claimant succeeds in part; Defendant's counterclaim dismissed

Orders

  • Declaration that the Defendant's Pointy Flat infringes the Claimant's Registered Community Design (RCD)
  • Declaration that the RCD and UCD are valid