The merits
Validity and subsistence of rights49.The first issue is whether UKUDR subsists in the full Heeled Regina design and/or in the two Partial designs.50.The Defendants pleaded a ‘must-fit’ exclusion in relation to the elasticated panel. This point was, very sensibly, not pursued at trial. 51.The Claimants said that the Partial designs were created (in the form of the 1856 boot) in October 2014 and the Heeled Regina was also created that month. It is clear from Mr Parker’s evidence, from the emails exchanged with Mr Lazo, and from F&F’s Instagram account that the 1856 design was made earlier than the Heeled Regina design, at some time between mid-October and 26 November 2014. I do not think that the timing of the creation of the Partial designs was contentious.52.The Defendants disputed the claim that the Heeled Regina design also dated back to October 2014. It seems to me that the history of the creation of the Heeled Regina set out above shows that whilst Mr Parker may have had a fairly detailed idea in mind about that design in October, some of the design work, including the important detailing of the gusset, was not finalised until he met Mr Lazo in November 2014. The exchanges on 27 November 2014 show that prior to that date Mr Lazo had identified the design, attributed a design number to it, and accepted that it had been made exclusively for F&F. There was no suggestion that the design was recorded in a design document, and the evidence did not clearly establish when the first sample of the Heeled Regina was made. However, by 27 November Mr Lazo was ready to make patterns and batches of the Heeled Regina, and so, on the balance of probabilities, it seems to me that a sample would have been made before that date, most likely when Mr Parker visited the factory earlier in November 2014. I reject the Claimants’ submission that the design was complete in October 2014, whether or not recorded in a document or sample. I conclude that the subsistence of UKUDR in the Partial designs needs to be tested as at October 2014, and in the Heeled Regina design as at November 2014 (and prior to 27 November).53.The Defendants concentrated their attack on the subsistence of the UKUDR upon the issue of whether the designs were commonplace in the sense explained above. They pleaded numerous earlier boot designs in support of their contention that the Heeled Regina design and the Partial designs were commonplace, and consisted of a combination of commonplace features. I was provided with pictures of the earlier boots, of varying degrees of clarity, but there was no direct evidence from anyone familiar with those designs, other than from Mr Parker who was familiar with some of the boots. The Defendants restricted their arguments at trial to 5 earlier designs. Those, and many of the other designs pleaded, share a number of features with the F&F designs in issue, such as a tassel hanging from the zip pull and a perforated or decorated fan shape at the top of the boot, which I gather are typical features of a Spanish riding boot. However, the Defendants did not contend that any of the earlier boots had all of the features of the Heeled Regina. I shall consider the five boots in what I believe to be their chronological order.54.The first of the boots relied upon was style 1620, a knee-length Spanish riding boot shown in the Lazo & Duque 2010 catalogue. Whilst it had the fan detail and a tassel, and an angled if not curved zip, it had a flat heel and a heavy sole, and looked rugged and utilitarian. Mr Parker commented upon the narrower leg of his designs, and I consider that the 1620 looked markedly wider around the ankle than the Heeled Regina and the Partial designs, as well as being much heavier overall. The Defendants relied upon the 1620 in particular for some elastication at the back of the boot which is just visible in the catalogue. However, what one can see is a crinkled or gathered panel on the back half of the outside of the boot; it is not clear whether it extended around the whole of the back of the boot, or just to the centre back, nor is it clear whether the panel was made of or covered in leather. The 1620 may (I cannot be sure) have had the same concept as the Heeled Regina of elastication along the full height of the boot, at the rear of the boot, but this took a very different form and looked very different to the elasticated panel of the Heeled Regina.55.Next in time was the “Central Hipica” boot. This was again very different to the designs in issue, in being a flat heeled, thick-soled, heavy and utilitarian looking boot. The Defendants relied upon it because it too had an elasticated panel, probably, although not definitely, with thin strips of leather attached to it. However, it seems from the photographs in evidence that the panel was just on the outer side of the boot, rather than at the centre back of the boot. It did not extend to the full height of the boot, but only to around mid-calf level, and had a curved edge.56.Next, the Defendants relied on another Lazo y Duque boot from 2013 called the “Bota Kate.” This had a slightly slimmer profile than the 1620, and a slightly higher heel, but I would again describe it as a low-heeled boot. Its sole looked thicker than the Regina designs, though much less rugged than the sole of the 1620. It seems to me that the photograph in evidence may show stitching running down the centre of the front of the boot, but this may be a fault in the reproduction of the image. Certainly, the evidence showed no sign of any elastic panel, at the back or otherwise. 57.Some way into the proceedings, the Defendants learned of a boot which was referred to as the Cejudo boot, made by another artisan from Valverde, Manuel Cejudo. He claims (rightly or wrongly, as Mr Lazo also appears to have made this claim) to be the maker of the Spanish riding boots sold to the Duchess of Cambridge. The Defendants produced some pages from the Cejudo website from February 2014, showing thumbnails of a range of boots and other leather goods for sale. As the Claimants pointed out, the website appears to show that Mr Cejudo will make boots to order, combining features shown on the site. The Defendants amended the Defence to rely upon this boot:58.Mrs Meikle provided an enlarged copy of the website thumbnail, and a video made by Cejudo in around 2011. The video was of poor quality, and I am not convinced that the boot shown in it, which Mrs Meikle said appeared to have an elasticated gusset at the back, was the boot above, as it seems to me to have a lower heel. Nor was the nature of the gusset (if any) at all clear. The photograph above is the only clear picture of this boot. 59.The Claimants pointed to various differences between the Cejudo boot and the Heeled Regina which are clear from the photograph above, such as the straight zip and the buckle across the top of the boot, but perhaps most importantly, the lack of any sign of an elasticated gusset at the back of the boot. It is not possible to see any form of elastication at the back of the boot. Mr St Quintin suggested that the Cejudo boot did not have a sloping top like the Claimants’ designs, which may be right, it is hard to be sure. There are also double lines of stitching around the heel piece and full length vertical strips of leather on each side of the zip which in my view are quite prominent.60.The Claimants also deny that the Cejudo boot shows that their designs were commonplace, because it was obscure. The evidential burden rests on the Defendants to show that it is not, whilst finding an obscure example which is fairly similar to the Claimants’ design may not be enough to make the design commonplace. Here, the Defendants only discovered the Cejudo boot after a lengthy and thorough research process undertaken by their solicitors. Their solicitor, Mr Bevan, made a witness statement in March 2021 in support of an application to amend the Defence to plead two earlier designs, the Abarca boot and the Cejudo boot. He explained that when preparing the Defence and Counterclaim in late 2019:“We commissioned a prior design search from RWS, a well-known patent and design search agency. … which undertook a comprehensive search of registered designs databases and other relevant literature. In addition, members of my firm (including me) undertook comprehensive Internet searches directed to searching for designs of Spanish riding boots of the appropriate period. In so doing we were aware from discussions with our client that designs of the particular kind of Spanish riding boot in issue originated from a town called Valverde …” Despite those extensive, professional and targeted searches, Mr Cejudo and the Cejudo boot did not come to light. It was only just before exchange of witness statements in February 2021, when Mr Bevan was looking for a document to exhibit to Mrs Meikle’s witness statement to give an introduction to Valverde, that he found an article (from Die Welt, in German) which mentioned Mr Cejudo, which led Mr Bevan to find the website page showing the boot relied upon. Mrs Meikle, who said that she was familiar with Valverde and its artisan producers, plainly knew nothing about Cejudo. Mr Parker, who had visited Valverde on a number of occasions, also said that he had never heard of Mr Cejudo.61.I have considered carefully whether it suffices that the Cejudo design was shown amongst other designs on the Manuel Cejudo website. However, in my judgment the fact that neither the Cejudo website nor the particular boot relied upon came to the Defendants' notice whilst carrying out their extensive research prior to filing the Defence, supports the conclusion that the Cejudo boot design was obscure. That view is reinforced by the fact that neither Mrs Meikle nor Mr Parker, both of whom were very familiar with Valverde and its manufacturers, knew of Mr Cejudo, let alone that boot. In my judgment, the Defendants have not shown that this boot might have been ‘current in the thinking of designers in the field at the time of creation of the designs.’ In the circumstances, in my judgment it is not to be taken into account as prior art for the unregistered designs. If I am wrong about that point, the fact that it had no elastication means that it would not affect the findings below as to the validity of the Heeled Regina design.62.Lastly, the Defendants relied upon the 1856 boot. As may be seen from the photographs above, this had many of the same features as the Heeled Regina, save for the gusset at the back. It was developed from the Early Regina and, as I have explained above, was the forebear of the Heeled Regina. The Defendants said that the Early Regina was the same as the Abarca boot, and some of the photographs of that boot show that, when worn, it is loose fitting, and creases or wrinkles around the ankle. Mr Parker said that both the 1856 and the Abarca were wider boots than the Early Regina or Heeled Regina. It is not easy to resolve that dispute from the photographs in evidence, but on balance it does seem to me that the Abarca boot looked wider than the Early Regina but the 1856 had the same or much the same profile as the Early Regina (in its non-elasticated form). The emails in which Mr Parker asked Mr Lazo to make the 1856 do not refer to slimming the shaft of the boot, only to the sole and heel. However, the Heeled Regina appears to me to have a slimmer profile than the 1856, facilitated by the elasticated panel. In the circumstances, I accept Mr Parker’s evidence that the 1856 was a wider boot than the Heeled Regina. 63.The panelled gusset has a significant impact on the overall design of the Heeled Regina, not simply because it slims the boot, but because the panels run all the way from the heel piece up to the top of the boot. In contrast, the narrow strip of leather over the centre seam on the back of the 1865 boot runs only from the heel piece to the cuff which encircles the whole of the top of the boot. Mr Parker suggested that the new feature tended to elongate the appearance of the boot, and I accept that it does so.64.The Defendants said that the Heeled Regina design was commonplace and, as the 1856 had all of the features of the RCD save for the back panel, it was in effect the Partial design shown at paragraph 16 above. The latter point was accepted by the Claimants in their Amended Reply and Defence to Counterclaim. The 1856 was never sold, probably because it was overtaken by the full Heeled Regina design, but, as I have said, photographs of it were posted on F&F’s social media on 26 November 2014. 65.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. Indeed, none of the boots I saw in the evidence appear to have had a panel/gusset even vaguely similar to that included in the Heeled Regina. The Defendants relied upon the elastication at the rear of the 1620 and (rear) side of the Central Hipica boots, but I am satisfied that such elastication looked completely different to the panel used in the Heeled Regina. 66.I conclude that the elasticated panel with its leather strips designed by Mr Parker was an original feature. Further, in my view, the panelled feature is of some visual significance to the overall design of the Heeled Regina, because it tends to elongate the look of the boot from the rear, and the elastication facilitates the narrower leg of the boot. In the circumstances, so far as the Heeled Regina is concerned, it seems to me that it is not, as the Defendants contended, a design consisting simply of a combination of run-of-the-mill features. Nothing resembling the panel feature has been shown to have existed in any other design in the field in question, and I am satisfied that the Heeled Regina was not commonplace as at November 2014. 67.Whilst the 1856 boot formed part of the design corpus from 26 November 2014, I have found that by then the design of the Heeled Regina had been completed. If I am wrong on that, and the Heeled Regina design was made a little later (as the Defendants suggest), in my view, the differences between the 1856 and the Heeled Regina designs are marked. Relying on the 1856 does not help the Defendants as it did not include the panel feature or anything like it, and I am satisfied that taking it into account would not render the Heeled Regina commonplace.68.69.As for the allegation that the Partial designs are commonplace, it is of course necessary to consider them as a whole, not simply take a pick and mix approach to their features and compare them to individual features of earlier designs. Not all combinations of known features produce a commonplace design. As pointed out in Copinger & Skone James on Copyright (at 13-120) where the goods are fashion items “often it is the particular arrangement of features that creates an aesthetic effect which, if new, takes the design above the commonplace.” Certainly, the Partial designs share a number of features with several of the earlier designs in evidence, but it is notable that the Spanish riding boots in evidence tend to have a flat or low heel, and in many cases a rugged, utilitarian sole. Apart from the Early Regina, the Bota Kate was perhaps the closest overall, with a heel that was low rather than flat, and a medium sole. If the Cejudo boot should (contrary to my finding above) also have been taken into account, I do not consider that it advances the Defendants’ arguments. It has a heel of much the same height as the Partial designs, but the zips are noticeably different, the sole looks thicker, the boot looks ‘clompier’ and the Partial designs lack the prominent buckle on the Cejudo.70.The 1856 was described by F&F as “the new Regina” and the instructions given to Mr Lazo asked him to amend the Early Regina design, which had a flat heel. Raising the heel height and changing the sole of the boot to create the 1856 boot required, it seems, relatively simple changes, substituting well-known and commonplace components for the heel and sole of F&F’s existing boot, in contrast to the work done to produce the Heeled Regina design. There was no evidence that the profile of the boot was also changed at that point. I have considered carefully whether the new combination of features shown in the 1856 boot did produce a new aesthetic effect, and I have concluded that it did not do so. I do not consider that the 1856 would have excited any particular attention amongst those in the design field. I find that the Partial designs consisted of a relatively simple combination of well-known features, and the combination was commonplace. Design right does not subsist in the Partial designs.Ownership71.As to ownership of the designs, the Defendants alleged that Mr Parker was not, in reality, the designer of the Heeled Regina, but it was designed by Mr Lazo as the artisan producer; this was put on the basis that Mr Lazo had designed the 1727 boots, and then simply modified them. In my judgment, Mr Parker’s input to the creation of the Heeled Regina design was not that of a customer asking for some bespoke alterations to an existing design, but was sufficient that he was the designer. Mr Lazo was the skilled craftsman who followed Mr Parker’s instructions to create samples to the design. Not only do I consider that Mr Parker was the designer, but Mr Lazo acknowledged that to be the case, for instance in a letter which he wrote to F&F’s solicitors in July 2018. It is therefore unnecessary for me to deal with the alternative scenario put forward by the Claimants, that Lazo & Duque had granted F&F an exclusive licence to use the design.Copying72.I do not accept Mrs Meikle’s denial that the Version 1 boots were copied from the Heeled Regina boots. She maintained that Bruar had bought an existing Dakota design, its Model 94, but there was no evidence to support that claim, and a good deal of evidence which contradicted it. 73.Mrs Meikle accepted that when Bruar attended the 2017 MICAM show they were looking for boots competitive to the Heeled Regina, yet she denied that she had thought that the Model 94 boot was a copy of the Heeled Regina. I found that response incredible, given the close similarity of the two designs. The very fact that for two consecutive years Bruar used photographs of the Heeled Regina boots in its catalogues to advertise its own boots speaks to the similarity between them – Bruar appears to have thought they were interchangeable or indistinguishable at least to its customers.74.Moreover, no documents were disclosed by the Defendants to support the claim that the Model 94 boots were shown by Dakota at the trade show and bought there. Later documents suggest that they were not. For instance, in an email from Mr Arroyo to Mrs Meikle of 13 April 2018 he assured her that Dakota would deliver “the 2 models of Fairfax middle next week”, and there were references in various further emails passing between Mrs Meikle and Dakota to phrases such as “the two Fairfax boots” or “the other Fairfax boot.” It seems that Dakota’s price for the Amira copies was too high for Bruar, and in an email to Mr Arroyo in June 2018, Mrs Meikle complained “I need a price for the new Fairfax over the knee … this is very, very expensive. The other Fairfax boot is only [ ] euro so [ ] euro cannot be right.” (emphasis added). In cross-examination, accepting that this was a reference to the Version 1 boot, she said that she would have referred to it in this way because Bruar had been wanting a competitive boot to the Heeled Regina. Again, I found that response incredible. The correspondence appears to me undoubtedly to refer to the Model 94 boot as a “Fairfax boot” in just the same way as the over the knee boots were (copy) Fairfax boots, that is to say, Version 1 was a copy of the Heeled Regina.75.In all the circumstances, 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.76.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.77.It is less clear that the Version 3 boot was deliberately copied from the Heeled Regina. Mr Birkbeck’s email to Mr Lazo of 24 April 2019 did refer to two earlier design numbers, 1727 and 1969, which he said were combined to produce Version 3. 1727 was a flat boot with no elastication, a thick sole and a wider profile, which lacks many of the pleaded features of the Heeled Regina, and there is no explanation of how the heel/sole and shape of Version 3 were changed from the 1727 to look like that of the Heeled Regina. I was not shown the 1969 design, so assume that it is not relevant. When asked about this, all Mr Birkbeck said was that he had not ‘presented’ the Heeled Regina or the Version 1 or 2 boots to Mr Lazo. That does not strike me as a very complete answer. He would hardly have needed to present the Heeled Regina design to Mr Lazo. On balance, I am 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.78.I therefore have no hesitation in finding that the Defendants’ boots were all copied – and deliberately copied – from F&F’s designs. Infringement79.The Version 1 boots look, at first glance, identical to the Heeled Regina. On close inspection, one can discern some minor differences: there is narrow piping around the top of the boot, and the vamp or front of the boot is made in two pieces, not one. In my judgment, those differences do not affect the result. I find that the design was copied, and the Version 1 boots are made very substantially to the Heeled Regina design.80.The Version 2 boots again differ slightly from the Heeled Regina. The piping has gone, but the main change was to reduce the number of leather panels over the elastic gusset from four to two. In my view this has a relatively limited impact, and in my judgment the boots are still extremely similar to the Heeled Regina design. I find that the Version 2 boots are made substantially to the Heeled Regina design.81.It seems that the Defendants hoped to avoid infringement by the changes made to the Version 3 boot. Strangely, given that aim, the boot is more like the Heeled Regina in having a single piece of leather at the front, and no piping, as well as the longer tassel. And the elasticated panel in Version 3 has four vertical strips of leather covering it, instead of the two strips of the Version 2 boot. However, in my judgment the change to the placement of the elasticated panel takes a significant step away from the Heeled Regina. The back of the boot looks very different to the Heeled Regina, as it has a single strip of leather over the centre back seam (more like the 1856 boot). There is also a noticeable difference on the inside of the boot, where four vertical strips of leather run the full height of the boot and abut the centre side seam, with a wider roughly triangular panel between the strips and the centre back seam. The difference to the elasticated panel of the Heeled Regina was evident on inspection of the boots. In those circumstances, I find that the Version 3 boots were not made exactly or substantially to the design of the Heeled Regina. 82.As to infringement of the Partial designs, had I found them to be valid, for the reasons set out above I would have found that both of them were infringed by the Defendants’ Version 1 and 2 boots, and the Second Partial Regina was infringed by the Version 3 boots.Secondary infringement83.For what it is worth, the Claimants also complained of secondary infringement under section 227(1), by importation, sale or offering for sale of infringing articles. In my view, the Claimants have satisfied the burden of showing that the Defendants had sufficient knowledge that their boots were infringing articles. Given my findings of deliberate copying, they had reason to believe the goods infringed.The RCD84.The next issue is whether the RCD is valid. There are, as HHJ Hacon stated in Cantel (above) 4 points to consider. First, the design sector. It was common ground that this was to be tested in light of the field of ladies’ boots. Second is the identity of the informed user and the degree of their awareness of the prior art. Again, it was common ground that this was a buyer and/or wearer of such boots. Whilst Mr St Quintin suggested that such an informed user might include a retailer, he was happy to accept that the level of attention which would be paid to the goods would be that of a consumer. Thirdly, I must assess the designer's degree of freedom in developing his design, focusing upon elements in respect of which the designer had more design freedom. And lastly, I must compare the RCD with the earlier designs relied upon. 85.In my judgment, 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.86.The Defendants asserted 5 earlier designs against the RCD. These included the 1620 boot, the Cejudo boot, the Bota Kate and the 1856 boot which I have discussed above. 87.In addition, the Defendants relied upon another style shown in the Lazo & Duque 2010 catalogue, number 1727. Again, this had the fan detail and a tassel, and an angled if not curved zip, but it too had a flat heel. The design overall had a utilitarian look, with a substantial sole, though one which was possibly rather less heavy and rugged than the sole of the 1620. The boot had a relatively wide ankle and no visible elastication.88.The 1620, 1727 and Bota Kate are all flat or low-heeled boots, and the 1620 and 1727 look heavier and more utilitarian than the RCD. I consider that they give a very different overall impression to the more elegant RCD, even without considering the impact of the back panel. 89.The closer designs to the RCD are the 1856 and the Cejudo boot. As for the Cejudo boot, as I have said, this also differed from the RCD, especially in the lack of any panel at the back of the boot, and in the addition of stitching and the buckle. The onus lies on the Claimants to show that the disclosure of that design could not reasonably have become known in the relevant circles in the normal course of business. Plainly, it could in theory have become known, as the design was on the Manuel Cejudo website and there is no evidence that the site was not freely accessible. However, equally clearly, the Defendants’ initial professional searches for prior art did not turn it up, which would suggest that it could not reasonably have become known. With some hesitation, especially given my conclusion at paragraph 61 above, I have concluded that given the general availability of trade websites, the Claimants have not satisfied the onus upon them to show that the Cejudo boot had not been relevantly disclosed for the purpose of considering the validity of the RCD.90.In my 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 boot in the RCD as indicating strips of the same material as the boot (leather or suede, etc) and many informed users would understand that they indicate the presence of an elasticated panel or gusset. This distinguishes the RCD from both the Cejudo boot (if I am right that it is relevant) and the 1856 boot. None of the 5 earlier designs has any such feature at the back of the boot, and in my judgment, the unusual rear panel is the feature of the RCD which will most strike the informed user. The Defendants submitted that the RCD was essentially a minor modification of the 1856 boot, so that the RCD is not valid. I do not agree. I am satisfied that the rear panel is significantly different to what had gone before, and the impact of the vertical strips or elasticated back panel (if so understood) is such that none of the earlier boots would produce the same overall impression on an informed user as the RCD. I therefore conclude that the RCD is valid.Infringement91.My views on the infringement of the RCD reflect my views on infringement of the Heeled Regina design, although of course the tests for infringement are not the same. In my view, the very slight differences between the Defendants’ 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 carrying out a direct comparison of the designs. The Version 2 boots are less similar, but in my view the smaller number of vertical lines at the rear of the boots still does not produce a different overall impression to the RCD. Both of these designs infringe. 92.As for the Version 3 boots, in some ways, as I have said, they are 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 have the leather strips over the elasticated panel are in my view of more significance, given the significance of the rear part of the RCD design to its validity. I conclude that the Version 3 design produces a different overall impression to the RCD and so does not infringe it.93.I will hear the parties as to the appropriate form of order, to the extent that this cannot be agreed.