How do you prove design infringement?
Updated: Dec 28, 2022
Boot designer Fairfax & Favor (F&F) has won a design infringement case against House of Bruar, a Scottish fashion retailer in the IPEC. Amanda Michaels’ judgment in the case was handed down on 25 March 2022 (Fairfax & Favor Ltd & Ors v The House Of Bruar Ltd & Ors  EWHC 689 (IPEC)).
F&F, which sells a Spanish-style riding boot called the Heeled Regina, alleged that three versions of Bruar’s boots infringed its registered and unregistered designs. There had been a brief commercial relationship between the parties, and other negotiations over several years.
The case originally also alleged infringement of a design for another boot, the Amira. The defendants admitted copying that before the trial.
Is the design commonplace?
The case for unregistered design right hinged on the features of the Heeled Regina boot, which the judge described as “the mid-height heel, the height of the shaft, the narrowing of the boot just above the ankle, the narrow shape of the toe, the panelling of the gusset at the back of the boot, the sloping cuff at the top of the boot, and the decorative features - the fan and tassel”.
Bruar alleged that the design was commonplace in the light of earlier boots, five of which were examined in detail. The judge however found it was not commonplace as it included original features, notably an elasticated panel with leather strips. However, the partial designs (comprising the boot with certain areas excluded) “consisted of a relatively simple combination of well-known features, and the combination was commonplace”; therefore, design right did not subsist in them.
The judge also found that the evidence showed that Bruar wished to sell boots that looked liked those of F&F and it had deliberately copied F&F’s designs. However, only the first two versions of its boots infringed; the third had some important differences and “were not made exactly or substantially to the design of the Heeled Regina”.
Different overall impression
She also found the registered design (a RCD that is now a comparable UK right) valid over prior designs that had been disclosed, saying:
“The Defendants submitted that the RCD was essentially a minor modification of the 1856 boot, so that the RCD is not valid. I do not agree. I am satisfied that the rear panel is significantly different to what had gone before, and the impact of the vertical strips or elasticated back panel (if so understood) is such that none of the earlier boots would produce the same overall impression on an informed user as the RCD.”
Despite the different test for infringement of registered designs, the judge’s conclusion mirrored that regarding the unregistered right: the first two versions of Bruar’s boots did not produce a different overall impression, but the third version did.
Apart from showing how important design rights can be for companies in the fashion industry, this case also highlights the value of being able to present comprehensive and convincing documents in court.
In this case, the claimants were able to demonstrate various facts about the design and development of the boots, and the behaviour of the defendants, to the satisfaction of the judge. By contrast, the judge found that some of the defendants’ arguments, particularly around independent development and copying, were not supported and in some cases were contradicted by the documentary evidence. In light of this, she described some of the responses by Bruar’s witness as “incredible”.