A recent decision of the UK High Court illustrates reasons why
it is often preferable to register your designs rather than relying
on unregistered design protection alone.
Rothy's Inc, and subsequently Giesswein Walkwaren AG, both
marketed "ballet flat"-type shoes made from knitted
recycled plastic, a material not previously used for this type of
shoe. Rothy's Inc had registered design protection via a
Registered (EU) Community Design, RCD, for its Pointed Loafer
design, and also believed its product qualified for unregistered
design protection as an Unregistered (EU) Community Design,
UCD.
Based on this design protection, Rothy's brought an action
of infringement against Giesswein, who counterclaimed for
invalidity. In deciding that Rothy's designs were valid, and
that Giesswein's ballet flat infringed Rothy's RCD, the UK
High Court covered some interesting points of designs practice in
Rothy's v Giesswein [2020] EWHC 3391.
