Obscure and remote prior art unravels defence to design infringement

On 25 March 2022, the Intellectual Property Enterprise Court (IPEC) handed down judgement in the design infringement case of Fairfax & Favor v House of Bruar –[2022] EWHC 689 (IPEC). The Court partially upheld claims that The House of Bruar (“Bruar”) infringed designs for a heeled riding boot from Fairfax & Favor (“F&F”).

The judgement demonstrates the significance of documentary evidence in design cases and provides a helpful reminder of the legal tests which the parties should bear in mind when considering matters of prior art (including the 'obscurity' of prior disclosures), as well as infringement.

Background

F&F, the claimant, deals in luxury leather, whilst Bruar is a Scottish retailer selling traditional attire with a rural theme from a mixture of well-known and artisan brands.

The case revolved around a traditional Spanish riding boot designed by F&F, known as the “Regina” boot or the “Heeled Regina”.

The Regina boot, which is subject to a Registered Community Design (RCD) as well as UK unregistered design right (UK UDR), had the following features which were relied upon by F&F as part of their claim:

1. The mid-height heel;
2. The height of shaft;
3. The narrowing of the boot above the ankle;
4. The narrow shape of the toe;
5. The panelling of the gusset;
6. The sloping cuff at the top of the boot; and
7. The decorative features (the fan and tassel)

As well as the RCD, F&F relied on UK unregistered design rights in the Regina boot as part of their claim. These included: (1) the whole of the Heeled Regina boot; (2) the Heeled Regina boot with the gusset area excluded; and (3) the Heeled Regina boot with the back panel, as well as part of the inner side of the boot, excluded. Bruar had created three similar boots, referred to in the judgment as Versions 1, 2 and 3 respectively.

The court heard detailed evidence about the history of dealings between the parties. In summary, following failed commercial discussions in 2015-2016, Bruar obtained samples of the Heeled Regina boot which led to images of both the Heeled Regina and Bruar’s Version 1 boots being shown in Bruar’s 2017/18 catalogue (the latter of which can be seen in the image below):

Shortly after this, Bruar contacted F&F to place an order of the Heeled Regina boots. Despite considering legal action, F&F were prepared to supply the Heeled Regina to Bruar in the hope that Bruar would stop selling the Version 1 boots which F&F regarded as an infringement of their design rights. However, despite placing an order for the Heeled Regina boot, Bruar continued to advertise both the Heeled Regina and the Version 1 boots in their 2018/19 catalogue. F&F subsequently sent a letter of claim to Bruar regarding the Version 1 boots, which led to the development of the Version 2 boots (which were materially the same as Version 1), in a futile attempt to alleviate F&F’s concerns. Bruar subsequently ordered the Version 3 boots from a manufacturer who had previously produced the Heeled Regina boot. The Version 3 boots retained several similarities to the Heeled Regina, including full length suede panels over the gusset and longer tassels:

F&F brought proceedings in August 2019 on the basis that Versions 1 and 2 infringed the design rights in the Heeled Regina, and subsequently amended their claim to also include Version 3.

Judgment

The judge considered five pieces prior art relied upon by Bruar, finding that they did share a “number of features with the F&F designs in issue” including a tassel hanging from the zip pull and a perforated or decorated fan shape at the top of the boot, which are known to be typical features of a Spanish riding boot. However, the judge ultimately found that Bruar had not been able to demonstrate that any of the prior art relied upon was in the minds of the designers of the Heeled Regina boot at the time of its creation. This, alongside the individual nature of the elasticated gusset at the rear of the Heeled Regina boot, led the judge to find that the design was not commonplace. She rejected Bruar’s submission that the Heeled Regina was a design consisting simply of a combination of run-of-the-mill features, as nothing resembling the panel feature had been shown to have existed in any other design in the field in question. F&F’s rights in the design were therefore valid.

The validity of F&F’s registered designs was also considered, in light of largely the same prior art evidence. Of the closest prior art examples, the judge concluded that an earlier design which was disclosed on a trade website “could reasonably have become known in the relevant circles in the normal course of business” despite not having been found by Bruar in its professional prior art searches. Accordingly, F&F had not demonstrated that it was ‘obscure’. Nevertheless, it was sufficiently different to the Heeled Regina not to render the RCD invalid.

The discussion on infringement of UK UDR hinged on the available evidence around whether the allegedly infringing design copied the Heeled Regina and was made “exactly or substantially” to the design, as required by Section 266(2) of the Copyright Designs and Patents Act 1988. The evidence made available to the judge demonstrated that Mrs Meikle, of Bruar, referenced F&F at various points when discussing designs with other parties. Although Mrs Meikle denied copying, the judge ultimately found that “the denial of copying is incompatible with the documentary evidence” which contradicted Bruar’s arguments that the Version 1 boot was based on an existing third party design or that it was a non-identical design intended to provide competition to the Heeled Regina in the marketplace.

It was therefore found that Versions 1 and 2 of the Bruar boots infringed UK UDR in the Heeled Regina. Predominantly due to the removal of the elasticated gusset (which in the judge’s view created a significant point of visual difference), the Version 3 boot was not found to be infringing of the Heeled Regina. This was despite the judge accepting that all three versions were deliberately copied from F&F’s designs.

The judge reached the same conclusion in relation to RCD infringement by Versions 1 and 2, confirming that the slight differences of detail were insufficient to “produce a different overall impression on the informed user” to the Heeled Regina, whereas Version 3 was sufficiently different and did not infringe.

Key learning points

• ‘Obscurity’ of prior art – it is noteworthy that the judge reached a different conclusion regarding the “obscurity” of a key piece of prior art – the ‘Cejudo’ boot – which was relied on to attack the validity of both UK UDR and RCD. In relation to UK UDR, the judge concluded that the Cejudo boot had not been shown to have been ‘current in the thinking of the designers in the field at the time of creation’ of the infringing designs, supported by the fact that it had not come to Bruar’s notice in the course of extensive prior art research. Accordingly, it was not to be taken into account as prior art for the unregistered designs. However, in relation to the RCD, the judge considered whether the Cejudo boot ‘could have reasonably’ become known in the relevant circles in the normal course of business. On the basis of the general availability of trade websites, she concluded (though with “some hesitation”) that it was a relevant prior disclosure. On the facts, the Cejudo boot was deemed sufficiently dissimilar not to affect the validity of F&F’s designs. However, the judge’s application of two different legal tests illustrates how the same piece of prior art may be novelty-destroying for one type of design right, but not another.
• Caution regarding prior art evidence - Bruar’s defence in this case was amended to add new pieces of prior art designs. The witness statement in support of this amendment application laid out the quantity of work that had been undertaken in order to find these new designs. This was in turn used by F&F’s counsel to demonstrate that the prior designs were obscure, on the basis that if they were not obscure, then less work would have been needed to uncover them. Therefore, a careful and considered balance should be struck between providing enough evidence for an amendment application to be accepted for introducing new prior art and, on the other hand, to not inadvertently create or provide evidence which could actually help demonstrate the obscurity of any new prior designs.
• Documentary evidence – although the facts of this case are highly specific, it demonstrates the significance of documentary evidence in guiding the court’s determination on arguments of copying. It remains vital that documentary evidence is used (whether by the claimant or defendant) in a manner which supports – and does not directly contradict - the case being made by the respective party. On the strength of compelling documentary evidence for which there was no credible counter-explanation by Bruar, the judge had “no hesitation” in finding that all of Bruar’s boots were deliberate copies of F&F’s designs.

Co-authored by Alex Parkin