Fairfax & Favor Ltd v The House of Bruar Ltd
| Jurisdiction | England & Wales |
| Judge | Amanda Michaels |
| Judgment Date | 25 March 2022 |
| Neutral Citation | [2022] EWHC 689 (IPEC) |
| Docket Number | Case No: IP-2019-000130 |
| Court | Intellectual Property Enterprise Court |
[2022] EWHC 689 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Rolls Building, London, EC4 1NL
MISS RECORDER Amanda Michaels
Case No: IP-2019-000130
Thomas St Quintin (instructed by McDaniel & Co) for the Claimants
Kathryn Pickard (instructed by Marks & Clerk Law LLP) for the Defendants
Hearing dates: 2 and 3 December 2021
Approved Judgment
Miss Recorder Amanda Michaels
This is the judgment following the trial of a claim for infringement of a registered Community design and of unregistered UK design rights in the design for a knee length ladies' boot. The design is based upon a traditional Spanish riding boot. I have to decide, in essence, whether three versions of the design sold (sequentially) by the First Defendant infringe the Claimants' registered and unregistered designs.
The Claimants' boot design is called the “Regina boot” or the “Heeled Regina.” It is 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 is in the style of a Spanish riding boot, it was not designed for serious equestrian or country use.
The claim was issued before the UK left the EU, and there is now a UK registered design No. 9002954222-00001 cloned from the Community Registered Design. No application was made to amend the claim expressly to assert reliance upon the UK registered design, but no point was taken about this by the Defendants. As it is not necessary to distinguish between the RCD and the equivalent UK right, for convenience in this judgment I shall simply refer, as the parties did, to the “RCD.”
The unregistered designs relied upon consist of a design showing the whole of the Heeled Regina, and two designs for the same boot with the exclusion of different parts of it.
The proceedings were issued in August 2019 against The House of Bruar Ltd (“Bruar”) and two of its directors. The claim initially included an allegation of infringement of two RCDs: the RCD for the Heeled Regina, and a design for a boot known as the Amira. However, the Defendants admitted infringement of the Amira design in the Defence and Counterclaim, and I do not need to deal further with that design, as such. The Claimants nevertheless said that the admission that the Amira design had been copied showed that the Defendants were willing or had a propensity to copy their designs. When the proceedings were issued, complaint was made about two versions of the Defendants' boots alleged to infringe the Heeled Regina design. A third boot design came to the Claimants' attention after issue, leading to an amendment to the Particulars of Claim in September 2019 to add that boot.
Directions were given in an order dated 3 April 2020. The Order and the list of issues did not limit the number of prior designs to be taken into account, which was a matter of some significance because numerous earlier boot designs were pleaded by the Defendants in order to challenge the validity or scope of the Claimants' rights. At trial, Miss Pickard helpfully identified a narrower range of designs which she said were the most relevant.
The witnesses
For the Claimants, both Mr Parker and Mr Fountaine provided witness statements and were cross-examined. Mr Fountaine was a wholly credible and reliable witness, as the Defendants accepted. However, they contended that Mr Parker was not a reliable witness, saying that his explanation of the process of designing the Heeled Regina was incomplete or confused, and that he gave various different dates when the design was said to have been made. On the whole, I found Mr Parker to be a credible witness, who was doing his best to explain the design process and I accept that he genuinely believed that the various designs which he had made had different features. However, he was rather unclear about the dates of the various designs, and especially as to the sequence of various design changes in the critical period of October and November 2014. I did not find his difficulty in specifying the relevant dates surprising so long after the event, nor did it lead me to doubt his veracity, but I have concluded that I should not rely upon Mr Parker's recollections as to dates without some corroborative evidence. The third witness for the Claimants was Mr Duff, a business consultant who sits on the board of the First Claimant. His evidence was not challenged in cross-examination.
The Defendants' main witnesses were Mrs Lorna Meikle (née Macleod) and the Second Defendant, Mr Patrick Birkbeck. Mrs Meikle is a long-standing employee of Bruar, and has been its ladieswear buyer for around 15 years. Regrettably, I did not find Mrs Meikle to be a reliable witness. For the reasons set out below, I did not believe her evidence on a number of points, and in particular I did not accept her denial that Bruar had copied the Heeled Regina design. I therefore consider it right to treat all of her evidence with caution, save as consistent with any corroborative evidence. I found Mr Birkbeck to be a more credible witness, although there were some gaps in his evidence, for instance as to his explanation of the design process when ordering the Defendants' Version 3 boot, which differed as between his witness statement and his oral evidence and as to the explanation he gave for the use of F&F's boots in Bruar's 2018/19 catalogue, given that the same ‘mistake’ had been made in the previous year's catalogue, something which he did not seek to explain. In addition, the Defendants relied upon a witness statement of their solicitor, Mr Bevan, who exhibited various documents, and who was not cross-examined. They also served a Civil Evidence notice seeking to rely upon some correspondence between Mr Lazo and Mr Birkbeck.
Background
Mr Parker and Mr Fountaine were schoolfriends who at the age of 16 came up with the idea of running their own luxury leather business. After going to agricultural college Mr Parker spent some time working with his godfather's business, Abarca, which provided him with an introduction to the leather and footwear industries. By about 2012, aged around 21, Mr Parker and Mr Fountaine started trading under the name “Fairfax & Favor.” They imported shoes from Spain and initially sold them through country shows and fairs and it seems that they have had a good measure of success. They decided early on that they wished to sell goods made to their own designs, with Mr Parker having the design and aesthetic input, and Mr Fountaine looking after the business development and administration. The First Claimant company (“F&F”) was incorporated on 7 May 2013 and its turnover has increased year on year; in the year to February 2017 its turnover was just over £3 million, rising to £13.5 million pounds for the 10 months to December 2020. F&F has 42 employees and sells directly through its own website and at events and shows such as Badminton and Burley, as well as through a number of retailers.
The First Defendant, House of Bruar Ltd, (“Bruar”) was described by Mrs Meikle as a major independent country fashion retailer based in Perthshire in Scotland. It sells traditional tweed and cashmere garments and other clothing and footwear with a rural or country theme, as well as sporting accessories, outdoor equipment, home and kitchenware and Scottish food and drink. It deals in well-known fashion brands as well as products sourced directly from “high-quality artisan producers.” The business has an annual turnover of around £30 million and sells from retail premises in Perthshire as well as via an online and mail order catalogue. Mrs Meikle explained that footwear accounted for less than 20% of the ladies' clothing and accessories for which she is responsible, but she did not give any turnover figures for footwear. It is clear that by at least early 2016 Ms Meikle and Bruar were aware of F&F and its products.
The Claimants' case (as clarified in its Amended Reply) was that the Heeled Regina boot was designed by Mr Parker, who is an employee as well as a director of F&F. He was not a professional designer, but through working at Abarca had experience of the footwear trade including trade in Spanish shoes and boots. This had, in particular, introduced him to manufacturers in the town of Valverde del Camino, which appears to be a centre of footwear production. There was some contradictory evidence before me as to who had designed some Spanish riding boots made in Valverde, which were popularised by Miss Kate Middleton, the future Duchess of Cambridge, but this was not directly relevant to the matters which I have to decide.
Mr Parker had met Mr Lazo of Lazo y Duque, which is a Valverde manufacturer, whilst he was working for Abarca, and it was Lazo & Duque which produced the prototypes of the Heeled Regina boot. Mr Parker's evidence was that he wanted to produce a style of boot which was more stylish and elegant, and less rugged, than a boot truly designed for riding. Whilst working for Abarca he had designed a form of riding boot which the Defendants relied upon in these proceedings as relevant prior art (“the Abarca boot”). Then, in around 2013 he designed a boot for F&F which was identified as the “Early Regina.” The Defendants' case was that the Early Regina was the same as the Abarca...
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