“Elasticated gusset” saves the day before Recorder Amanda Michaels in Fairfox & Favor’s design right case against House of Bruar

http://ipkitten.blogspot.com/2022/03/elasticated-gusset-saves-day-before.html

For anyone who has spent hours doom scrolling on Instagram or Twitter, and your algorithm is set up like the AmeriKat’s, you may have seen ads for leather riding boots.  One of these brands that has popped up on the AmeriKat’s Instagram are riding boots from Fairfox & Favor.   A very popular design of one of these boots is based on a traditional Spanish riding boot – the Regina boot or Heeled Regina – which looks like the below (and for a closer look click here).

It is a slim, knee-length boot, with a full length zip with a tassel pull and a “fan” above it and, crucially as it transpires, an elasticated panel at the back with four lengthwise strips of leather.  This design is subject to a Registered Community Design (RCD), unregistered UK design right and, now thanks to Brexit, a UK registered design (No 9002954222-00001).   Fairfax & Favor brought design right infringement proceedings against the House of Bruar in August 2019 in respect of the design for the Regina and another boot – the Amira.  The House of Bruar admitted infringement of the Amira boot, such that it was only the Regina boot that was at issue in the recent judgment of Miss Recorder Amanda Michaels in Fairfax & Favor v House of Bruar [2022] EWHC 689.    Three versions of a boot sold by House of Bruar were at issue – Versions 1, 2 and 3.  The decision is a great case-study for in-house counsel on the role of documentary evidence and for outside counsel in generating their own evidence.  
The parties

Fairfax & Favor was started in May 2013 by two schoolfriends who wanted to design their own luxury leather goods after initially importing goods from Spain. They sell their products directly through online sales, through a number of retailers and at shows such as Badminton and Burley. Their revenue has risen to £13.5million. Although their products have the “country” look and feel about them, the products aren’t designed for serious country wear. The Defendants, House of Bruar, and two of the directors, are based in Perthshire, Scotland and sell traditional tweed, cashmere, sporting accessories, footwear with a country/rural theme and Scottish food and drink. It sells well-known and artisan brands through its retail premises, online store and mail-order catalogue and has an annual turnover of £30million. The footwear part of their business accounted for less than 20%. By 2016, employees of the House of Bruar were aware of Fairfax & Favor.

In 2015, a sales agent of Fairfox & Favor began discussions with House of Bruar to supply them with boots. Those conversations continued into 2016, but did not lead to sales. In 2016, the sales agent sent House of Bruar’s ladieswear buyer (Mrs Meikle) a Fairfox & Favor brochure which included the Heeled Regina boot. In April 2017, Mrs Meikle bought herself a pair of Heeled Regina boots. Another House of Bruar employee, Mr Whitfield, ordered a pair of these Heeled Regina boots in May 2017 on the company credit card to be delivered next day to a House of Bruar designer who was involved in the production of the Bruar’s 2017/18 catalogue.

The boot

The prototypes of the Heeled Regina boot were produced by Lazo y Duque. Mr Lazo had met Mr Parker, the designer of the Heeled Regina, when Mr Parker was working at Abarca where he was introduced to manufacturers in Valverde del Camino which is the epicenter of Spanish riding boot design. Mr Parker wanted to produce a boot which was less rugged and more stylish and elegant than a practical riding boot. He had previously designed a riding boot at Abarca, which the House of Bruar relied on as prior art. Mr Parker then designed, and Fairfox & Favor sold, a boot called the Early Regina. The House of Bruar said the Early Regina boot was identical to the Abraca boot Mr Parker had designed. An iterative design process commenced over emails between Mr Parker and Mr Lazo when producing the designs, resulting in what was referred to as the 1856 design which was also relied on by the House of Bruar as prior art:


Although this was never sold, photographs of this 1856 design was posted on Fairfox & Favor’s social media in November 2014. After further design work on an elasticated panel (or gusset to expand and contract with the calf) with strips of leather/suede running down the back of the boot and adding of tassels, the design was finalized in November 2014. The final design added a higher heel and varied the design of  the leather/suede strips. This resulted in a new design model number – 1857 – and the flat-heeled version given the model number – 1852. Mr Lazo confirmed that these various designs were exclusive to Fairfox & Favor and manufactured the boots until April 2017. In 2018, Fairfox & Favor became concerned that Lazo y Duque were supplying copies of their boots to unauthorized third parties (but not House of Bruar) and, to protect their position sought an undertaking confirming that they would not do so, that the design of the elasticated panel/gusset had been made by Mr Parker and the Heeled Regina was exclusive to F&F.

The design

Fairfox &. Favor filed an application for a Registered Community Design on 21 January 2016. Although there are 7 representations, the main features can be seen in 3 drawings:

The unregistered designs relied upon are:  (a) the whole of the Heeled Regina boot (essentially the same as the RCD); and (b) the Heeled Regina boot with the back panel/gusset area excluded; and (c) the Heeled Regina boot with the back panel and part of the inner side of the boot excluded:

Fairfox & Favor relied on seven features of the unregistered design of the Heeled Regina as follows:

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

The House of Bruar story
Having not bought Fairfox & Favor’s products to sell at House of Bruar, in early 2017 Mrs Meikle met with a company also based in Valverde called Dakota Boots run by Mr Arroyo.  At a trade show, she asked for samples and stock of Dakota’s Model 94 boot to be delivered by April 2017 so that they could be included in House of Bruar’s catalogue. This was the “Version 1” boot.  Fairfox & Favor said that this boot included all the elements of the Heeled Regina design.  However, Dakota failed to deliver this Version 1 boot to House of Bruar.  In March 2017, Fairfox & Favor emailed House of Bruar offering to supply them with boots, but House of Bruar refused.  The next month, Mrs Meikle wrote to Fairfox & Favor suggesting some terms on which Bruar would stock Fairfox & Favor’s boots.  She explained that previously they did not want to buy products through an agent as they would have to pay commission, but suggested a discount of 10%.  Fairfox & Favor countered with offering a 5% discount which (the same offered to Harrods).  No agreement was reached.  
In May 2017 a photoshoot took place for Bruar’s 2017/18 catalogue for release in August 2017.  In the catalogue were two photos of a tan and a brown boot which Fairfox & Favor said were their boots (one which had been bought by Mrs Meikle and one ordered by Mr Whitfield) and one was a copy of the Heeled Regina – the Version 1 boot which looked like this:    

At the time, House of Bruar was facing supply issue given the undelivered Dakota boots.  So Mrs Meikle emailed Fairfox & Favor placing a modest order for boots, including Regina and Amira at a special price.  Right before she sent this email, Fairfox & Favor had internally decided to send a letter of complaint to House of Bruar after they were tipped off as to their boots and copies of their boots being in the catalogue.  Fairfox & Favor hoped that in supplying House of Bruar with their products, they would stop selling the Version 1 boots.  However, the relationship was short lived due to price.  But despite Fairfox & Favor saying that they were willing to discuss the pricing, Mrs Meikle never reverted.  In the meantime, she had already asked Mr Arroyo if they could supply House of Bruar with the Version 1 boots which they wanted to include in its 2018/2019 catalogue.  In those emails with Mr Arroyo, Mrs Meikle sent him a link to a page showing the Amira boot so that Mr Arroyo could “copy exactly” this boot.  The Amira boot was the boot that House of Bruar admitted was infringed.  But, with Mr Arroyo failing to supply samples, the 2018/2019 House of Bruar catalogue included several photographs of suede Spanish riding boots, including, again, genuine Fairfox & Favor boots alongside the Version 1 boots.  
Finally, in August 2018, Fairfox & Favor sent a letter of claim to the House of Bruar about the Version 1 boots. This then led to the development of the Version 2 boots in the hope this would resolve the complaint.  However, the only difference between Version 1 and Version 2 was that Version 2 had only 2 suede/leather strips over the elasticated panel at the back of the boot, no piping at the top of the boot and the color of the lining changed to orange (the same as Fairfox & Favors, although the color of the lining was not in issue inthe case). In October 2018, House of Bruar said it had only sold samples of the Version 1 boots, and would look to further differentiate the boot with a Version 3 boot, which they, coincidentally or not, had asked Lazo y Duque to make (the same company who worked with Fairfox & Favor).  In cross-examination, Mr Birkbeck of House of Bruar admitted that the Heeled Regina was “absolutely” in his “thought patterns” when ordering the Version 3 boots from Lazo y Duque in Spring 2019.  As a result, the Version 3 boot had full length suede panels over the gusset which was identical in concept (but not placement) to the Heeled Regina as now it was on the side of the boot and the tassels were longer.  It looked like this:

Fairfox & Favor thus brought proceedings in August 2019, complaining that Versions 1 and 2 infringed the design rights in the Heeled Regina (and Amira) and when House of Bruar began selling the Version 3 (above) amended their Particulars of Claim to include Version 3.  
The law

Miss Recorder Amanda Michaels summarized the law on unregistered and registered design right law from a bevy of cases including Original Beauty Technology Co Ltd v G4K Fashion Ltd [2021] F.S.R. 20,
Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 and Action Storage Systems Ltd v G-Force Europe.Com Ltd [2016] EWHC 3151 (IPEC), Farmers Build [1999] R.P.C. 461, A. Fulton Co Ltd v Grant Barnett & Co [2001] RPC 16, Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat)

The summary of the law for UK unregistered design rights was that :

  • they have to be original and, in order to act as a useful crosscheck on the breadth of a claim to infringement, not “commonplace” meaning the design is not “trite, trivial, common-or-garden, hackneyed or the type which would excite no particular attention in those in the relevant art” (Laddie J in Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] R.P.C. 289). However, a new combination of commonplace features is not necessary itself commonplace (Farmers Build [1999] R.P.C. 461). Commonplace should be interpreted narrowly, not broadly – it is not a synonym for “well known” (per Mummery LJ in Farmers Build at p. 481). “Commonplace” does not mean that the requirement is that the design has to be “new” (A. Fulton Co Ltd v Grant Barnett & Co [2001] RPC 16);
  • they are not excluded from protection (“must fit”, “must match”);
  • they have been recorded in a design document or an article has been made to the design;
  • they have not expired;
  • for a finding of infringement, the design has to be shown to have been copied, the infringing design has been made “exactly or substantially” to the design, the differences as well as similarities have to be compared, copying of a subset of features is not enough (Neptune v Devol Kitchens [2017] EWHC 2172);
  • for a defendant to show they have not infringed, a defendant has to show that the significant features of the design are commonplace (meaning the design was current in the thinking of designers in the field in question at the time – Lambretta [2005] R.P.C. 6 – or was “ready to hand” – Ultraframe v Eurocell [2005] EWCA Civ 761), set out the prior art relied on where those features are said to be found and the date when that prior art was available to designers in the field.
The summary of the law for registered rights was set out as follows:

  • the 6-stage summary of how to compare a Registered Community Design with an allegedly infringing design in Cantel v ARC (which referred to the decision of the General Court in H&M Hennes & Mauritz BV & Co. KG v OHIM (Case T-525/13)):

“(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;
(2) Identify the informed user and having done so decide (a) the degree of the informed user’s awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;
(3) Decide the designer’s degree of freedom in developing his design;
(4) Assess the outcome of the comparison between the RCD and the contested designs, taking into account (a) the sector in question, (b) the designer’s degree of freedom, and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public.
(5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison.
(6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters.”

  • the informed user is a particularly observant user of the product in which the design is intended to be incorporated (not a designer, technical expert, seller), has knowledge of the design corpus and features normally included, interested in the products concerned and has a relatively high degree of attention when he uses them, makes a direct comparisons but does not perceive designs as a whole or analyzes details or minimal differences (Samsung Electronics v Apple Inc [2012] EWHC 1882, Grupo Promer EU:T:2010).
The Judgment

Miss Recorder Amanda Michael held that the date of the subsistence of the UK unregistered design rights was to be tested at October 2014 (in relation to the early, partial designs) and prior to 27 November 2014 (for the Heeled Regina).

The Prior Art & “commonplace”

The House of Bruar relied on a boot made by another artisan from Valverde – Manuel Cejudo – which was said to have an elasticated gusset at the back. But the only photo provided (and video of poor quality) from 2014 shown to the Judge did not convince her that there was such a gusset (see below). Fairfox & Favor pointed to various differences between the Cejudo boot and the Heeled Regina, including the straight zip and buckle across the boot and lack of elasticated gusset at the back of the boot. Further, the Cejudo boot does not mean the Fairfox & Favor designs were commonplace; the Cejudo boot was argued to be and the Judge accepted that the Cejduo boot was obscure as it was only discovered after “a lengthy and thorough research process undertaken by [the Defendants’] solicitors“. There had been earlier 2019 “comprehensive” third-party prior design search which was described in detail by House of Bruar’s solicitors when they amended their Defence to rely on the Abarca and Cejudo boot in 2021, but that search did not turn up the Cejudo boot. Neither Mrs Meikle or Mr Parker, who were familiar with and visited Valverde, did not know of Mr Cejudo.

The House of Bruar also relied on the 1856 boot that had been posted to Fairfox & Favor’s social media posts in November 2014. That early design did not have the elasticated gusset and was a wider fit. The Heeled Regina has the elasticated gusset at the back and is a slimmer fit. None of the prior art comprises a boot with an elasticated panel covered by thin strips of leather running the full height of the boot.

Accordingly, the Heeled Regina was not commonplace in November 2014. The elasticated panel with its leather strips designed by Mr Parker was an original feature, it elongated the look of the boot from the rear and the elastication facilitated the narrower leg in the boots. It is thus not a design consisting of a combination of run-of-the-mill features that House of Bruar contended: “Nothing resembling the panel feature has been shown to have existed in any other design in the field in question“.

The earlier partial designs shown in the 1856 boot did not produce a new aesthetic effect and “would not have excited any particularly attention amongst those in the design field“. Therefore, the earlier partial designs consisted of relatively simple combination of well-known features and the combination was common place.

Copying of the unregistered designs

All House of Braur’s boots were deliberately copied from Farifox & Favor’s designs: “I conclude that Bruar wished to sell boots which looked like F&F’s boots, and asked Dakota to copy the Heeled Regina design when making the Version 1 and Version 2 boots. In my judgment, the denial of copying is incompatible with the documentary evidence.” The Judge continued:

“Mr Birkbeck accepted that the 2018/19 catalogue had included F&F boots, and said that he was annoyed that the F&F boots, which were by then old stock so far as Bruar was concerned, had been included in the catalogue by mistake. He gave no real explanation of why the same thing had occurred in the previous year’s catalogue. In the light of Mrs Meikle’s email exchanges with Dakota, it seems to me that at least until June 2018 Bruar intended to sell the Version 1 boots, as well as the copies of the Amira boots. In the circumstances, the inclusion of the genuine Heeled Regina boots as well as its Version 1 boots in that year’s catalogue was probably done because of the continuing delay in receiving samples from Dakota, rather than just by mistake, either with the intention of supplying genuine F&F boots or (much more probably) because Bruar thought that it could advertise its boots by showing the F&F boots, and then supply its own boots.

The Version 3 boots – the ones that were being designed to further differentiate from the Heeled Regina after Fairfox & Favor sent the letter of claim – were more difficult. It lacked many of the pleaded features of the Heeled Regina. However, the Judge was, on balance:

“satisfied that Bruar and Mr Lazo took the Heeled Regina design as their starting point, rather than any other Lazo & Duque product, and amended it in the hope of avoiding any infringement. As Mr Birkbeck accepted, it was “absolutely” in their “thought patterns,” and this explains the similarity of the heel and sole to those of the Heeled Regina, and the extension of the length of the tassel far beyond that of style 1727, or Versions 1 and 2, to be much closer to the Heeled Regina. I find on balance that this version too was copied from the Heeled Regina, even if it differs from it in the ways discussed below.”
Infringement of the unregistered design rights

The Judge held that Version 1 and 2 boots were infringed. The Version 1 boot looks, at first glance, identical to the Heeled Regina although there are minor differences including the narrow piping around the top of the boot and the fact the front of the boot is made in two pieces not one. However, those differences did not affect the result. Version 2 had the piping gone and reduced the number of leather panels of the elastic gusset from four to two. Still, this had a limited impact. Version 2 was thus “still extremely similar to the Heeled Regina design“. However, the removal of the elasticated gusset in the Version 3 boot led the Judge to hold that those boots were not made exactly or substantially to the design of the Heeled Regina (although the Version 3 boot was “more likely the Heeled Regina in having a single piece of leather at the front, no piping and a longer tassel“).

 
The Registered Community Design

The Judge held the Registered Community Design as valid. Adopting the first four points of HHJ Hacon’s test in Cantel, the Judge found:

  1. The design sector was the field of ladies’ boots.
  2. The informed user was a buyer and/or wearer of such boots.
  3. Mr Parker had a very wide degree of design freedom when designing the Heeled Regina: “There are innumerable possible permutations of ladies’ boot designs. It is clear from the evidence before me that there are large numbers of designs for ladies’ boots which exhibit a host of different features and combinations of features. Indeed, evidence such as the Lazo y Duque catalogue of 2010 shows many forms of Spanish riding boots, which suggests that even in that sub-category of the appropriate sector here, there is design freedom.”
  4. Many of the earlier designs, and another style of boot from Lazo y Duque (with a fan detail, tassel, angled zip, flat heel and utilitarian look with thick sole) relied on by House of Bruar all had a very different overall impression than the “more elegant” Registered Community Design.
The elasticated gusset distinguishes the Registered Community Design from the closest designs of both the Cejudo boot and the 1856 boot. The “unusual rear panel is the feature of the RCD which will most strike the informed user” and produces a different overall impression on an informed user of the RCD. The RCD is thus valid. The RCD was also infringed by the Version 1 and 2 boots for similar reasons as those for the unregistered design right infringement analysis.

Forget Puss in Boots.  
The AmeriKat working on her own
boots story….

Take-Aways

To the AmeriKat, this story has some lessons on both sides of the fence for design right owners and potential defendants:
1.  A Reminder:  that the claimants have the burden to show that disclosure of the prior designs could not reasonably have become known in the relevant circles in the normal course of business.  Given the general availability of trade websites, Fairfox & Favor in this case could have sought to show that the prior designs had not been relevantly disclosed for the purpose of considering the validity of the RCD.  Although, in the end, nothing really turned on this.   
2.  A Warning:  that in proofing up your application to amend your Defence to add in new pieces of prior art designs, you may score an “own goal”.  In this case the witness statement in support of the amendment application detailed the work to find the new prior designs.  This was used to show that the prior designs were obscure given the sheer amount of work and time required to find them.  Thus a balance has to be struck in between showing that the amendment is supported and not “late”, but not going so far as to provide evidence as to the obscurity of the new prior designs.  

3.  A Reality Check:  that the good, bad and ugly of documentary evidence is front and center in design cases.  Documentary evidence is extremely important in showing or disproving copying, and in showing the timeline of design development and relevant date to judge the design.  Educating in-house counsel, designers and buyers as to how these records are used offensively and defensively and how they can impact a company’s brand is extremely important.

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