The High Court decision in J Choo (Jersey) Ltd v Towerstone Ltd  EWHC 346 will be of great comfort to the fashion industry as the decision heralds the possibility of strengthened protection for handbag and shoe designs and similar accessory items under Community registered design (CRD) legislation. On granting summary judgment to J Choo Ltd, the famous designer shoe label, in respect of infringement of a new range of Jimmy Choo handbags, Mr Justice Floyd denied the “innocent infringer defence” thereby providing a clear advantage for CRDs compared to similar UK-only designs.
The claimant, Jimmy Choo, the famous manufacturer of designer footwear, designed a top range of handbags to augment their shoe range. Jimmy Choo had unregistered Community design rights in its Ramona handbag and owned a Community registered design for its Ramona range of handbags as seen here.
On application for summary judgment, Jimmy Choo stated that Towerstone sold handbags that were confusingly similar to Jimmy Choo’s Ramona handbags from its Oxford Street store (see Towerstone handbag below). The main issues before Mr Justice Floyd were: i) whether there was indeed infringement of the Jimmy Choo registered and unregistered rights; and ii) whether, if infringement was found, Jimmy Choo was entitled to damages or an account of profits.
In granting the application, Mr. Justice Floyd deemed any prospect of Towerstone coming up with a successful defence as being “effectively fanciful”. There was no argument by Towerstone that handbags like the one shown above were not sold in its Oxford Street store. It therefore only remained for Floyd J to examine the merits of infringement by Towerstone of the various rights owned by Jimmy Choo in the Ramona handbag. In so doing, he relied on Lord Justice Jacob’s decision in Proctor & Gamble v Reckitt Benckiser  EWCA Civ 936 for the appropriate starting point in determining infringement of a CRD.
Following the steps outlined in the Proctor & Gamble decision, one needs to: first, identify the informed user and determine what the user would know about “the design corpus”; second, identify the overall impression given by the design and do the same for the alleged infringement; and third, ask whether the impression given by the two are the same or different. Floyd J found “in the case of handbags, the informed user would be someone with knowledge of handbag design but NOT the woman in the street and not a handbag designer. Such a person would know about the design constraints inherent in handbag design, what features were necessary and unnecessary, etc. Evidence was presented and was not disputed by the defendant that the most significant features of a handbag design are those on the front of the bag, the part which is visible in use because it is carried with that side pointing out.” This was considered important evidence and was to be used in combination with the “overall impression of the handbag”, which is also relevant in assessing infringement.
Further evidence submitted by Jimmy Choo stated that when the Ramona bag was launched it was brought to market with great fanfare and celebrity endorsement and described in numerous fashion and life-style magazines at the time.
Remarkably, the Defendants did not attempt to show any prior art in handbags to mitigate their own situation and invalidate the registered design right held by Jimmy Choo. This proved a fatal error as Mr Justice Floyd was only able to review the evidence at hand. The judge went on to discuss at length the various design features of the bag and to give his overall impression of the Ramona handbag: “Standing back, it seems to me that the overall impression to be formed by an informed user at an appropriate level of generality is of a bucket bag with a double row of large eyelets threaded with a belt and interrupted by a clasp strap appearing to run along the bag longitudinally, and with handles which terminate in a lozenge shape integral with the eyelet design.”
The overall impression of the Defendants’ handbag was exactly the same as that of Jimmy Choo’s handbag and was therefore an infringement of Jimmy Choo’s Community registered design and unregistered design right. Mr Justice Floyd went on further to state that “the likelihood that these two designs could have been arrived at independently, given the large number of identical features in a design field as free as the present one, seems to me to be truly fanciful”.
The Defendants claimed that they were “innocent infringers” and had no reason to believe, when they purchased the bags, that these were infringing copies of Jimmy Choo’s Ramona design. The Court thus had to assess whether the concept of innocent infringement was available to a defendant when applying Community design rights.
Not surprisingly, the Defendants argued it was anomalous that the Intellectual Property (Enforcement etc) Regulations 2006/1038 gave an innocent infringer a defence to a claim for a financial remedy in the case of infringement of a UK registered design, whereas no such defence was available for infringement of a Community registered design. Paragraph 1A of the 2006 Regulations states:
1A (1) This regulation and regulations 1B to 1D are without prejudice to the duties of the Community design court under the provisions of Article 89(1)(a) to (c) of the Community Design Regulation.
In an action for infringement of a Community registered design all such relief by way of damages, injunctions, accounts or otherwise is available to the holder of the Community registered design as would be available in respect of the infringement of any other property right.
At the same time, the 2006 Regulations made provisions for an amendment to UK Registered Designs Act by inserting a new Section 24B which provides that:
1. In proceedings for the infringement of the right in a registered design damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered.
2. For the purposes of subsection (1), a person shall not be deemed to have been aware or to have had reasonable ground for supposing that the design was registered by reason only of the marking of a product with—
a) the word “registered” or any abbreviation thereof, or
b) any word or words expressing or implying that the design applied to or incorporated in, the product has been registered,
unless the number of the design accompanied the word or words or the abbreviation in question.
3. Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of the right in a registered design.
In the Act, the reference is to a UK-registered design and therefore, on the face of it, the 2006 Regulations provide an innocent infringer with a specific defence if he proves certain facts in the case of infringement of a UK-registered design. In contrast, it was within the power of the UK courts to grant all such relief by way of damages for infringement of a Community design as is available for infringement of any other property right.
Floyd J agreed that there were no policy reasons for giving an innocent infringement defence to the infringer of the national right while denying it to the infringer of the Community right. This, however, was exactly what the legislature had done and the judge saw no way of applying Section 24B directly nor would he be able or even willing to create an innocent infringement defence under the auspices that it would be “appropriate under the circumstances”, as the defendant argued. UK law had to provide the sanction appropriate under the circumstances and damages had to be provided on the same basis as for infringement of any other property right so that was the sanction that the Court therefore had to apply. There was no indication that Parliament had intended to introduce some kind of discretionary right to damages for infringement of Community design right.
The position regarding innocent infringement was even better when it came to Community unregistered design rights as the Copyright Designs and Patents Act 1988 specifically provided an innocent infringer defence to a claim for damages and Article 19 of the Community Design Regulation (6/2002/EC) did not. Lloyd J was therefore of the belief that there was no defence of innocent infringement available in respect of registered or unregistered Community design. Jimmy Choo was therefore entitled to an inquiry as to damages or, at its option, an account of profits for infringement of both registered and unregistered design right.
If Lloyd J is correct in his assessment of Section 24B, it demonstrates a wholly disparate situation between Community and UK law in the area of design legislation—an area supposedly harmonised some years ago. For the time being, it would behove those with UK registered designs to use appropriate notices on their products as required under the new Section 24B.