Eco-fashion brand Rothy’s wins RCD case at IPEC

Austrian shoe company  Giesswein Walkwaren infringed a registered community design (RCD) held by sustainable fashion brand  Rothy’s but did not copy its unregistered community design (UCD), the  UK IP Enterprise Court ruled on December 16.

In November 2017, California-based Rothy's, launched its “pointed loafer”, a “ballerina-style” shoe composed of knitted material and sourced from recycled plastic. According to the company, its  products are made from 100% recycled plastic water bottles and recycled materials. This year, the company claimed that it had repurposed more than 70 million water bottles in the making of their products since 2012.

In April 2019, Giesswein began marketing a range of ballerina-style shoes known as a “pointy flat”, the upper parts of which were in a knitted meshwork fabric—also made from recycled plastic.

Later that year, in July, Rothy’s claimed that the company’s “pointy flat” infringed two of its 2017 EU design rights. These rights comprised an RCD, filed and registered with the  EU Intellectual Property Office (EUIPO) in November 2017, which claimed priority from the company’s US design patent number 29,603,576 filed in May 2017.

The second right concerned a UCD that arose from the disclosure of images of the “pointed loafer” on Rothy's website, in emails sent to people based in the European Union (EU) and on various social media sites including  Facebook and  Instagram.

Giesswein counterclaimed for the invalidity of Rothy’s RCD and its UCD, claiming they were derivative of two earlier shoes, the Allegra K and the Bonnibel.

William Roth Martin, co-founder and chief creative officer of Rothy’s, provided evidence about the online availability of Rothy’s “pointed loafer” since 2017, including images on its website, but also on Facebook and Instagram.

During the proceedings, both parties agreed that Rothy’s was the first fashion brand to introduce ballerina shoes composed of knitted yarn, and made from recycled plastic.

But Giesswein argued that the disputed RCD displayed a "regular, generally square pattern”, that implied a “woven”, not a “knitted”, textile, and that, consequently, the company had not infringed the earlier design.

The court, however, held that by looking at the shoe closely, “including by zooming in on high-resolution images”, that it was clear that the shoe showed “a knitted fabric, rather than any of the alternative textures” claimed by Giesswein.

“This patterning is inconsistent with a woven fabric, or unprinted animal hide such as nubuck or suede, which would not, for example, radiate as it does at the heel. Even a coarse weave would not change direction as the lines in the RCD do…. the RCD shows a knitted fabric, and, more particularly, a fabric knitted from a comparatively heavy thread,” it said in its finding.

The court held that while fabrics knitted from heavy thread were known to be used in gym shoes and sneakers, the informed user would not be aware that they had been applied to ballerina shoes.

“Both the RCD and the pointy flat are pointed-toe slipper cut ballerina shoes, with a low heel, obvious counterline, protruding tongue and recognisable gussets. The differences in some measurements and ratios will be noticed by the informed user, but not to such an extent as to create a different overall impression, even in combination,” the court found.

It further stated that if the RCD is taken at the “right level of generality”, the informed user would conclude that, while the RCD and the pointy flat were not identical, they would “produce the same overall impression”. Following this finding, the court concluded that Giesswein’s “pointy flat’ infringed Rothy’s RCD.

In reaching its conclusion, the court declined to rely on Rothy’s citation of its US design patent, arguing that US design patent drawing conventions differ, and the requirements of the  US Patent and Trademark Office differ from those of the EUIPO.

The court, however, held that Rothy’s allegation that the Austrian company unconsciously copied its UCD was “far-fetched”, and that Giesswein had set out its “independent design case”, which was “coherent and consistent”.

The court found that Rothy’s “pointed loafer” was a short-run product, only available on its website for a comparatively short period and that Giesswein’s “pointy flat” was an “independent work of creation” by a designer who “may be reasonably thought not to be familiar” with the “pointed loafer”. Consequently, the court found that Giesswein had not infringed Rothy’s UCD.

Finally, It dismissed Giesswein’s argument that both the RCD and UCD should be invalidated due to their similarity to previous designs, finding that the earlier shoe designs “produce different overall impressions on the informed user”.