Intellectual Property Law

No innocent infringement defence for Community Designs

The High Court has just delivered a judgment on design rights that looks to establish the Community Registered Design as a very useful right for designers. The case in question is J Choo (Jersey) Limited v Towerstone Limited. I set out below key details of the case.

The case

The claim was brought by part of the Jimmy Choo group of companies. As you may know, Jimmy Choo is a maker of rather expensive shoes and handbags. This case was about a handbag, for which the claimant:

• owns a Community Registered Design for a handbag
• asserted it also had unregstered design rights

The claim was against Touchstone Limited, a company that has a shop on Oxford Street, London. Jimmy Choo claimed that Touchstone was selling a handbag that infringed the registered and unregistered design rights mentioned above. Jimmy Choo asked for summary judgment in the case.

A summary judgment means judgment by a Court without having to go to trial. Part 24 of the Civil Procedure Rules stipulates that summary judgment can be granted where the Court considers that defendant has no real prospects of defending the claim (or the claimant has no real prospect of succeeding in the claim).

Touchstone also argued that it had only innocently infringed Jimmy Choo's rights, not realising the infringement when it bought the bags for sale. This is something that Touchstone wanted to be taken into account if the Court found that its handbag infringed Jimmy Choo's, when the Court considered whether the defendant should pay damages or hand over profits made from the handbag.

The judgment

The High Court found that:

• Touchstone's handbag infringed Jimmy Choo's Community Registered Design. The Court applied the test for infringement set out in the Procter & Gamble case. In essence this is whether, from the overall impression of the Jimmy Choo handbag and the Touchstone handbag, the "informed user" would regard two handbags as being the same or different. The Court found that the overall impression was that the two were the same.
• Touchstone's handbag infringed Jimmy Choo's unregistered design right. For an unregistered design right to be infringement, the infringing design must have copied the unregistered design. The Court found that the number of similaries between the two handbags was such that the only explanation was that the Touchstone handbag was a copy.
• Whilst the law on UK registered designs gave a defence of innocent infringement, the law on Community Registered Designs did not allow this defence. Therefore, Touchstone could not argue innocent infringement to reduce the financial remedy that would be awarded to Jimmy Choo.

IMPACT® comment

Us IMPACT® lawyers sometimes describe IP rights to clients as being a like a bag of tools. For some tasks, one tool is better than another (or that tool might be the only one for the job) and for some tasks, it it best to combine the tools. Here, Jimmy Choo used 2 tools to enforce its rights against a copycat handbag: the Community Registered Design and unregistered design rights.

In terms of protecting designs, the case emphasises that the Community Registered Design is often going to be the best tool for the job: once infringement is proven, there's no messing about arguing over innocent infringement as there can be with UK registered designs. Therefore, if you are thinking of obtaining design registration for something important, the extra cost of a Community Registered Design (as compared with a UK registration) may be worth it in the long-term.

One further point for UK registered designs is that the case emphasises the importance of including notice of your registered design on products implementing that design. Including such a notice makes it more difficult for an infringer to argue that it didn't have any reason to believe that any design rights applied to the design.

Full post as published by IMPACT on March 11, 2008 (boomark / email).