June 27, 2022
Fairfax and Favor Ltd, a luxury leather and footwear business, issued proceedings against The House of Bruar Ltd, a country fashion retailer in Scotland, for infringement of Fairfax’s Registered Community Design (RCD) and of its unregistered UK design rights (UDR) in a design for the “Heeled Regina” ladies’ boot, which was a slim fitting, elegant, knee-length boot with a mid-height heel, a full zip on the outside of the leg with a tassel pull, and a “fan” above it. Whilst the boot was in the style of a traditional Spanish riding boot, it was not designed for serious equestrian or country use.
The RCD was filed in January 2016 and was as follows:
The proceedings were issued before the UK left the EU and subsequently a UK registered design was cloned from the RCD.
The UDR consisted of a design showing the whole of the Heeled Regina, as shown in the RCD, and two designs for the same boot with the exclusion of different parts of it (the Partial Designs), which were as follows:
- the Heeled Regina boot with the back gusset area excluded:
2. the Heeled Regina boot with the back panel and part of the inner side of the boot excluded:
The Heeled Regina boot was designed by Mr Parker, an employee and director of Fairfax.
In 2013, Mr Parker had designed a form of riding boot with a flat heel and no rear elasticated panel (the Early Regina). A Spanish manufacturer called Lazo y Duque (L&D) had made the Early Regina for Fairfax.
Mr Parker then developed the design to produce what was called the “1856” boot, which had a mid-height heel. L&D produced a single sample of the 1856 boot, as follows:
In October 2014, Mr Parker asked L&D to add an elasticated panel, overlaid with strips of leather/suede running down the back of the heeled boot, and tassels. In November 2014, Mr Parker visited L&D and the design was finalised by adding a higher heel and varying the design of the suede strips to produce the Heeled Regina. L&D manufactured the Heeled Regina boots until April 2017.
Interactions with Bruar
In 2015, Fairfax had discussions with Bruar in relation to supplying it with boots, but no sales were made as Bruar objected to the price. In early 2016, Fairfax sent Bruar a brochure, which would have included the Heeled Regina boot as Fairfax’s most popular product.
In March 2017, Fairfax again offered to supply Bruar, offering the same 5% discount it had given to Harrods. No agreement was reached. In April 2017, Mrs Meikle of Bruar, responsible for ladieswear buying, bought a pair of Heeled Regina boots for, she said, her own use.
In May 2017, a former employee of Bruar ordered a pair of Fairfax’s Heeled Regina boots, paid for by company credit card. The boots were delivered to a designer involved in the production of Bruar’s 2017/18 catalogue.
The Bruar 2017/18 catalogue contained photographs of Fairfax’s boots, together with Bruar’s Version 1 boot. The Version 1 boot was supplied by another Spanish manufacturer, Dakota, and was as follows:
The following year, in the development of its 2018/19 catalogue, Bruar asked Dakota for a “new riding boot (as Fairfax) …”, which Fairfax said was a clear reference to Bruar’s Version 1 boots. The 2018/19 catalogue included several photographs of suede Spanish riding boots, again including genuine Fairfax boots alongside the Version 1 boots.
Fairfax sent a letter of claim to Bruar in August 2018 in relation to the Version 1 boots. This led to the development by Bruar of its Version 2 boots, which werethe same as the Version 1 boots save that they only had two suede strips over the elasticated panel at the back of the boot and did not include the piping around the top of the boot.
Bruar subsequently developed a Version 3 boot as follows:
Fairfax claimed that all three Bruar Versions infringed Fairfax’s rights.
Validity and subsistence of rights
In terms of subsistence of UK UDR in the Heeled Regina design and the Partial Designs, Bruar argued that the designs were commonplace and consisted of a combination of commonplace features. It pleaded five earlier boot designs, including the 1856, in support. However, there was no direct evidence from anyone familiar with those designs, other than from Mr Parker who was familiar with the 1856. The five pleaded designs shared various features with the Fairfax designs, such as a tassel hanging from the zip pull and a perforated or decorated fan shape at the top of the boot, which were typical features of a Spanish riding boot, but none had all the features of the Heeled Regina.
Miss Recorder Amanda Michaels found that none of the prior art comprised a boot with an elasticated panel covered by thin strips of leather running the full height of the boot. In fact, none had a panel/gusset even vaguely like the Heeled Regina. Accordingly, Recorder Michaels concluded that the elasticated panel with its leather strips designed by Mr Parker was an original feature.
Recorder Michaels also found that the elasticated panelled feature was visually significant to the overall design of the Heeled Regina because it elongated the look of the boot from the rear and facilitated the narrower leg of the boot. Therefore, the Heeled Regina was not, as Bruar argued, a design consisting simply of a combination of run-of-the-mill features. Nothing resembling the panel feature existed in any other design in the field in question at the relevant time. Accordingly, Recorder Michaels found that the Heeled Regina was not commonplace.
As for the Partial Designs, Recorder Michaels found that, considering them as a whole and not just considering individual features, they consisted of a relatively simple combination of well-known features and that the combination was commonplace. Therefore UK UDR did not subsist in them.
Recorder Michaels rejected Bruar’s argument that the Version 1 boots that had been supplied by Dakota were not copied from the Heeled Regina boots, as there was no evidence in support and the similarity between the designs was striking. The correspondence between Bruar and Dakota “undoubtably” referred to the Version 1 boot as a “Fairfax boot”, i.e., copied from the Heeled Regina on Bruar’s instructions. The same was true of the Version 2 boot.
It was less clear that the Version 3 boots were deliberately copied from the Heeled Regina, but Bruar accepted that the Heeled Regina was “absolutely” in its “thought patterns” at the time, which explained the similarity of the heel and the sole. Recorder Michaels concluded that, on balance, Version 3 was also copied from the Heeled Regina.
There were some minor differences between the Version 1 and 2 boots and the Heeled Regina, but Recorder Michaels found that they did not affect the overall result that they were copied and made substantially to the Heeled Regina design. The Version 3 boot did not infringe, however, due to the change in placement of the elasticated panel, which took a “significant step away” from the Heeled Regina.
As to infringement of the Partial Designs, Recorder Michaels said that had she found them to be valid, she would have found that both were infringed by the Version 1 and 2 boots, and that the second Partial Design was infringed by the Version 3 boots.
In Recorder Michaels’ view, Mr Parker had a very wide degree of design freedom when designing the Heeled Regina as there are innumerable possible permutations of ladies’ boot designs.
As for the five earlier designs relied on by Bruar, Recorder Michaels found that three of them were flat/low-heeled boots, which gave a very different overall impression to the more elegant RCD. As for the other two, which Recorder Michaels said were closer to the RCD, Fairfax failed to show that the disclosure of them could not reasonably have become known in the relevant circles in the normal course of business.
Overall, however, in Recorder Michaels’ judgment, the informed user knowing the design corpus and interested in the products concerned would understand the vertical lines shown on the back view of the RCD as indicating strips of the same material as the boot (leather or suede, etc.) and many informed users would understand that they indicated the presence of an elasticated panel or gusset. This distinguished the RCD from all the earlier designs, none of which had any such feature. It was the feature that would most strike the informed user and was significantly different to what had gone before. In Recorder Michaels’ view, its impact was such that none of the earlier boots produced the same overall impression on an informed user as the RCD. Accordingly, the RCD was valid.
Recorder Michaels found that the very slight differences between Bruar’s Version 1 boots and the RCD, such as the piping at the top, would not produce a different overall impression from the RCD on the informed user. The Version 2 boots were less similar, but the smaller number of vertical lines at the rear of the boots still did not produce a different overall impression to the RCD. Therefore, they both infringed.
As for the Version 3 boots, in some ways they were closer to the RCD than Versions 1 and 2, especially at the front of the boot. However, the back of the boot and the inside of the leg where the Version 3 boots had the leather strips over the elasticated panel were of more significance, given the importance of the rear part of the RCD to its validity. Therefore, in Miss Michael’s view, the Version 3 design produced a different overall impression to the RCD and did not infringe. (Fairfax & Favor Ltd v The House of Bruar Ltd  EWHC 689 (IPEC) (25 March 2022) — to read the judgment in full, click here).