Last week, the Utrecht District Court handed down a comprehensive ruling in a case between Birkenstock and Scapino concerning various sandal models. Although the case revolves around footwear, the outcomes are relevant to any company that works with product design, look-alike products, private labels or product development in a competitive market.
In this update, I will explain the most important insights from the judgment and discuss their relevance for companies.
Who is the creator and who is entitled to enforce rights?
The first question was who created the five Birkenstock models (Madrid, Arizona, Florida, Boston and Gizeh) and who is entitled to exercise the rights.
The court rules that designer [A] should be regarded as the creator. His signed statement and the consistent manner in which Birkenstock presented itself for many years carry considerable weight.
It is important for companies to ensure that structural changes and mergers within a group are properly recorded. Intellectual property rights do not automatically transfer, especially under foreign law.
It was only on 22 March 2023 that the exploitation and enforcement rights were legally transferred to Birkenstock IP. Enforcement actions taken by Birkenstock IP prior to that date therefore lack a legal basis.
When is a product design protected by copyright?
The court applies the European work test: a product is protected when the creator’s free, creative choices are visible in the design. Utensils can also receive such protection, as long as their form is not entirely determined by function or technology.
In the case of Birkenstock sandals, the lower part (footbed and sole) is the same in all five models. It is precisely in this footbed that the court sees clear creative choices, such as the sole circumference, the recessed heel, the elevation in the middle, the toe grip at the front, the raised edges with a sloping profile and the choice to leave the cork edge visible.
In addition, the way in which the straps are attached to the sole is distinctive: the leather straps extend to the sole and disappear between the footbed and sole, without visible stitching or decorative elements, except for a rectangular buckle. In the Arizona and Florida models, several straps are cut from a single piece of leather and disappear into the sole as a whole.
The court weighs all these elements together. In that combination, it sees a unique, recognisable design that did not exist in the older design heritage at the time of the introduction of the models.
The conclusion is that Madrid, Arizona and Florida are copyrighted works.
Two models that are not protected
This is different for two models.
Boston
A similar clog from 1971 was already part of the design heritage. The court considers the upper part to be the defining element of this model, and it is too similar to the older design.
Gizeh
Old Benelux design rights were decisive here. The design deposit from 1983 expired after fifteen years, which automatically meant that the copyright also expired. This cannot be revived. Without a declaration of maintenance, the protection has therefore definitively expired.
Does the look-alike infringe?
The court assesses for each model whether the Scapino sandals create the same overall impression as the protected Birkenstock variants.
Madrid
For one model of sandal from Scapino, the court ruled that almost all distinctive elements had been copied. Minor differences, such as a different footbed or leather structure, did not sufficiently alter the overall impression. This was deemed to constitute infringement.
Arizona
The court reached the same verdict for eleven sandals. Most models almost completely replicate the distinctive combination of elements. The Hush Puppies variants are even closer to the original.
Florida
The Hush Puppies sandal that resembles the Florida is also considered to be infringing. The design is so similar that minor differences do not alter the overall impression.
No slavish imitation
For the Boston and Gizeh, which are no longer protected by copyright, the court will assess whether there has been slavish imitation. This requires that the original product has its own distinct identity on the market.
Birkenstock was unable to prove this. The market research it commissioned proved to be methodologically unreliable. Even long-term marketing campaigns are not proof of a distinctive external design. In addition, Scapino pointed out that many similar sandals had been on the market for years. Because Birkenstock did not take structural action against this, the court ruled that the distinctive character had been diluted.
Claims based on slavish imitation are therefore rejected.
Estoppel: previous agreements limit enforcement
An important part of this ruling is Scapino’s appeal on the grounds of forfeiture of rights. In 2015, Birkenstock wrote to Scapino about sandals with a similar sole. The rest of the design was not discussed at the time. According to Scapino, they were entitled to conclude that those elements did not pose a problem.
The court agreed with this reasoning. Scapino could reasonably trust that Birkenstock had no objection to components other than the sole. Birkenstock is entitled to change its mind and enforce its rights, but this must be done with due care. The court ruled that the summons issued in 2023, demanding an immediate ban and compensation for past damages, went too far.
Therefore, Scapino should have been granted a grace period. The court has set this at one year from 16 August 2023. Furthermore, Birkenstock IP only had the correct enforcement rights from 22 March 2023 onwards, which meant that claims relating to earlier periods could not succeed in any case.
What is being imposed on Scapino?
The main obligations for Scapino are:
- within four weeks, the sale of the infringing Madrid, Arizona and Florida models must be discontinued
- in the event of a violation, a penalty of 1,000 euros per day (or part thereof) or 75 euros per sandal will be imposed, with a maximum of 100,000 euros
- Scapino must provide an overview of infringing sandals from 17 August 2024 onwards.
- compensation is awarded (to be determined by the court)
- Scapino must pay over €51,000 in legal costs
What does this mean for businesses?
This ruling provides several lessons for companies in design, retail, lifestyle, private labels, manufacturing, e-commerce and FMCG.
- Accurately record the transfer of intellectual property rights, especially in international structures. If a company merges, splits or sells shares over the years, it must be clearly recorded who owns which IP rights. This prevents enforcement from failing years later because the chain is incorrect.
- Be aware that the overall impression of a design is decisive; minor changes do not prevent infringement.
- Enforce consistently. Tolerance and selective action can lead to loss or restriction of rights.
- Check in good time whether old model deposits still offer protection.
Would you like to know whether your product is sufficiently distinctive, or are you at risk from look-alike products? Julia van Leeuwen of Guldemond Advocaten will be happy to advise you on protection, enforcement and product design.
