Gill Dennis Tom Nener May 9 2022 High Court ruling highlights need for care with prior art in design infringement proceedings Pinsent Masons | Intellectual Property - United Kingdom Gill Dennis, Tom Nener Intellectual Property FactsDecisionCommentThe Intellectual Property Enterprise Court's recent judgment in Fairfax & Favor Ltd and others v The House of Bruar Ltd and others(1) is a useful reminder to both claimants and defendants of some of the basics of design infringement litigation in the United Kingdom.FactsThe case concerned design rights in a "slim fitting, elegant, knee-length" fashion boot with a "mid-height heel, a full zip on the outside of the leg, with a tassel pull and a 'fan' above it".(2) The boot was in the style of a traditional Spanish riding boot and its most significant design feature was an elasticated rear panel (or "gusset") running down the back of the boot from top to bottom and covered with four strips of leather positioned lengthwise. The boot was known as the "Heeled Regina".The Heeled Regina was designed by Mr Parker, a director and employee of Fairfax & Favor (Fairfax), a luxury leather business. Fairfax obtained a registered Community design (RCD) for the Heeled Regina for "footwear" and the representations of the design in the RCD are shown in Figure 1 below.Figure 1: representations of design in Fairfax's RCDHouse of Bruar (Bruar), an independent country fashion retailer, began to sell a similar boot, known as "version 1" and shown below in Figure 2. The design of version 1 was modified in response to design infringement concerns raised by Fairfax with Bruar. These modifications resulted in version 2 (in which the number of suede strips over the elasticated back gusset was reduced from four to two) and subsequently version 3 (in which the elasticated gusset was moved to the inside of the boot).Figure 2: Bruar's version 1 bootIn August 2019, Fairfax issued design infringement proceedings against Bruar, alleging infringement of the RCD and of its UK unregistered design rights (UKUDR). Fairfax relied on UKUDR in the whole of the Heeled Regina and in the Heeled Regina with several features excluded, including the rear gusset (these were known as the "partial designs").By way of defence to the infringement claim, Bruar argued that UKUDR did not subsist in the whole Heeled Regina design or the partial designs, and challenged the validity of the RCD.Bruar's attack on the subsistence of UKUDR focused on whether the Heeled Regina design and the partial designs were "commonplace". In English law, to qualify for UKUDR, a design must not be commonplace in the design field in question at the time of its creation. Bruar needed to demonstrate to the Court's satisfaction that the designs were "trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant art",(3) such analysis to be "conducted by reference to materials shown to be current in the thinking of designers in the field at the time of creation of the designs".(4)Bruar pleaded numerous earlier "prior art" boot designs in support of its contention that the designs were commonplace. At trial, it restricted its arguments to five earlier designs, the most significant of which was the "Cejudo" boot, shown in Figure 3.Figure 3: Cedujo bootDecisionUKUDR in Heeled ReginaThe judge analysed all the prior art in detail. Although she acknowledged that it did share a number of features with the Heeled Regina design, she held that none of the prior art comprised a boot with an elasticated panel covered by thin strips of leather running down the full height of the rear of the boot. She commented that "none of the [prior art] boots I saw in the evidence appear to have a panel/gusset even vaguely similar to that included in the Heeled Regina" and that any elastication feature relied on in the prior art by Bruar "looked completely different to the panel used in the Heeled Regina".Bruar's best hope was the Cejudo boot, but the only clear image available of this was that shown in Figure 3. Bruar asserted that the Cejudo boot had a rear elasticated gusset but the judge was not convinced. She took the view that "it was not possible to see any elasticated gusset" from the poor-quality images provided. Furthermore, and perhaps most significantly, the judge held that to the extent that the Cejudo boot was a piece of relevant prior art and did include an elasticated gusset as a design feature, it was nevertheless "obscure". English law provides that prior art which renders a design commonplace must not be obscure.Unfortunately for Bruar, it had put in evidence detailed information about the very extensive prior art searches it had conducted on receipt of proceedings. That evidence not only described the "extensive, professional and targeted" searches that had been carried out but also highlighted that these searches had not unearthed the Cejudo boot, which had only come to light later and somewhat inadvertently during a separate detailed research process. This last piece of evidence proved fatal to Bruar's commonplace defence. The judge was satisfied that the Cejudo boot was obscure prior art and commented:in my judgment the fact that neither the Cejudo website nor the particular boot relied upon came to [Bruar's] notice whilst carrying out their extensive research prior to filing the Defence, supports the conclusion that the Cejudo boot design was obscure . . . [Bruar has] not shown that this boot might have been current in the thinking of designers in the field at the time of creation of the designs. In the circumstances, in my judgment it is not to be taken into account as prior art for the unregistered designs. If I am wrong about that point, the fact that it had no elastication means that it would not affect the findings as to the validity of the Heeled Regina design.(5)In providing such detailed evidence of how carefully it had carried out prior art searches, Bruar scored something of an own goal, which ended its commonplace defence. Accordingly, the judge went on to conclude in respect of the whole Heeled Regina design:that the elasticated panel with its leather strips designed by Mr Parker was an original feature. Further, in my view, the panelled feature is of some visual significance to the overall design of the Heeled Regina, because it tends to elongate the look of the boot from the rear, and the elastication facilitates the narrower leg of the boot. In the circumstances, so far as the Heeled Regina is concerned, it seems to me that it is not, as [Bruar] contended, a design consisting simply of a combination of run-of-the-mill features. Nothing resembling the panel feature has been shown to have existed in any other design in the field in question, and I am satisfied that the Heeled Regina was not commonplace.(6)Having concluded that UKUDR subsisted in the Heeled Regina, the judge held that Bruar's version 1 and version 2 infringed those rights but that version 3 did not, primarily because of the absence of the elasticated gusset.UKUDR in partial designsThe judge went on to clarify, in respect of the partial designs, the manner in which they should be compared to the prior art. She confirmed that it was necessary to consider the partial designs as a whole and not simply to take a "pick and mix" approach to their features and compare them to individual features of the prior art. This was, she said, particularly important where the goods are fashion items because it was often the particular arrangement of the features that created an aesthetic effect which, if new, elevated the item above the commonplace.(7)Although the judge was again satisfied that the partial designs shared a number of features with several items of the prior art, she considered that the combination of features of the partial designs did not produce a new aesthetic effect that would have excited particular attention among those in the design field at the time of their creation. The partial designs were, the judge held, commonplace and UKUDR did not subsist in them. Notably, the partial designs did not include the rear elasticated gusset and it was that element of their design which was determinative of (both for and against) Fairfax's case in this judgment.Validity of RCDBruar's attack on the validity of the RCD focused on whether the RCD had individual character. This required the Court to assess whether the overall impression produced by the RCD on the informed user differed from the overall impression produced on such a user by the prior art.Bruar argued that the prior art demonstrated that the RCD did not have individual character. The judge disagreed. With the exception of the Cejudo boot, the prior art gave a "very different overall impression to the more elegant RCD".(8) To deal with the Cejudo boot, the onus was on Fairfax to show that the disclosure of the Cejudo design could not reasonably have become known in the relevant circles in the normal course of business (in other words, that the Heeled Regina had been designed without knowledge of it). The judge held that Fairfax had not discharged this burden, saying:plainly, it could in theory have become known, as the design was on the Manuel Cejudo website and there is no evidence that the site was not freely accessible. However, equally clearly, [Bruar's] initial professional searches for prior art did not turn it up, which would suggest that it could not reasonably have become known.(9)With "some hesitation",(10) the judge concluded that, given the general availability of trade websites, Fairfax had not discharged the burden upon it to show that the Cejudo boot had not been relevantly disclosed for the purpose of considering the validity of the RCD. However, the judge went on to hold the inclusion of the elasticated gusset made the RCD "significantly different"(11) to what had gone before, such that the Cejudo boots did not produce the same overall impression as the Heeled Regina on the informed user, rendering the RCD in the judge's view valid and infringed.CommentIn design infringement cases, reliance on extensive prior art resulting from detailed searches can be both positive and negative. Searches that reveal prior art with identical or similar features to the design in issue and which are potentially novelty destroying are clearly very valuable and could be determinative of the case. However, there could be negative consequences where the prior art is more borderline. Such prior art could actually help the claimant's case by both reinforcing that the design in issue is indeed novel (as it did in this case) and by demonstrating (again, as happened in this case) that the designer had a wide degree of design freedom, potentially expanding the scope of protection provided by a design registration. Careful consideration needs to be given to prior art and what it actually speaks to the issues in the case before it is put in evidence.Separately, and of particular relevance to the fashion sector, a comparison with the prior art must take into account the overall aesthetic effect of an article, and not merely focus on similarities and differences between isolated design features.For further information on this topic please contact Gill Dennis or Tom Nener at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected] or [email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.Endnotes(1)  EWHC 689 (IPEC).(2) Id at paragraph 2.(3) Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2)  RPC 289 per Laddie J.(4) Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd  EWCA Civ 886 per Jacob LJ.(5)  EWHC 689 (IPEC) at paragraph 61.(6) Id at paragraph 66(7) Id at paragraph 69.(8) Id at paragraph 88.(9) Id at paragraph 89.(10) Ibid.(11) Id at paragraph 90.