Last week, the court in Utrecht delivered a detailed judgment in a dispute between Birkenstock and Scapino concerning several sandal designs. Although the case concerns footwear, its conclusions matter to any business involved in product design, lookalikes, private labels or product development in a competitive market.
This update explains the judgment’s principal findings and their relevance to businesses.
Who is the creator, and who may enforce the rights?
The first question was who created the five Birkenstock designs—Madrid, Arizona, Florida, Boston and Gizeh—and who was entitled to exercise the rights.
The court held that designer [A] was the creator. His signed statement and Birkenstock’s consistent presentation of itself over many years carried substantial weight.
Businesses must carefully document group restructurings and mergers. Intellectual property rights do not necessarily transfer automatically, particularly under foreign law.
Birkenstock IP validly acquired the exploitation and enforcement rights only on 22 March 2023. Its enforcement claims for earlier periods therefore lacked a legal basis.
When is a product design protected by copyright?
The court applied the EU test for a work: a product is protected where the design expresses the creator’s free and creative choices. Functional objects may also qualify, provided their form is not entirely dictated by function or technology.
The lower part of the Birkenstock sandals—the footbed and sole—is the same in all five designs. The court identified clear creative choices in the footbed, including the sole’s outline, recessed heel, raised middle section, front toe grip, raised edges with a descending profile and exposed cork edge.
The way the straps attach to the sole is also characteristic: the leather extends to the sole and disappears between footbed and sole without visible stitching or decorative elements apart from a rectangular buckle. In the Arizona and Florida, several straps are cut from a single piece of leather and enter the sole together.
The court assessed these elements together. Their combination created a recognisable design not present in the earlier design corpus when the models were introduced.
The Madrid, Arizona and Florida were therefore copyright-protected works.
Two designs without protection
The position differed for two models.
Boston
The earlier design corpus included a similar clog from 1971. The court considered the upper to be the model’s visually defining element, and it resembled the earlier design too closely.
Gizeh
Former Benelux design law was decisive. The 1983 design registration expired after fifteen years, automatically extinguishing copyright too. That copyright could not revive. Without a declaration maintaining copyright, protection had definitively lapsed.
Does the lookalike infringe?
The court assessed each model to determine whether Scapino’s sandals created the same overall impression as the protected Birkenstock versions.
Madrid
For one Scapino design, the court found that almost all characteristic elements had been copied. Minor differences, such as a different footbed or leather texture, did not sufficiently alter the overall impression. This constituted infringement.
Arizona
The court reached the same conclusion for eleven sandals. Most reproduced almost the entire characteristic combination of elements. The Hush Puppies versions were even closer to the original.
Florida
The Hush Puppies sandal resembling the Florida was also infringing. Its design was so close that minor differences did not produce a different overall impression.
No unlawful slavish imitation
For the Boston and Gizeh, which lacked continuing copyright protection, the court considered slavish imitation under Dutch unfair competition principles. This requires the original product to have a distinctive appearance in the market.
Birkenstock failed to establish that. Its market research was methodologically insufficiently reliable, and longstanding marketing campaigns did not prove a distinctive appearance. Scapino also showed that many similar sandals had been available for years. Because Birkenstock had not acted against them consistently, the court considered that its designs’ distinctiveness had been diluted.
The slavish-imitation claims were therefore dismissed.
Loss of enforcement rights through prior conduct
A significant issue was Scapino’s reliance on rechtsverwerking: loss or restriction of the ability to enforce rights because of earlier conduct. In 2015, Birkenstock had challenged sandals with a similar sole but had not raised the rest of the design. Scapino argued that it could infer those elements were unobjectionable.
The court agreed. Scapino could reasonably rely on Birkenstock having no objection to elements other than the sole. Birkenstock could change its position and enforce its rights, but had to proceed carefully. The 2023 demand for an immediate prohibition and retrospective damages went too far.
Scapino should therefore have received a transition period, which the court set at one year from 16 August 2023. Moreover, Birkenstock IP had held the necessary enforcement rights only since 22 March 2023, so claims for earlier periods could not succeed in any event.
What was Scapino ordered to do?
The principal obligations were:
- Stop selling the infringing Madrid, Arizona and Florida designs within four weeks.
- Pay a penalty of €1,000 per day or part-day, or €75 per sandal, for non-compliance, subject to a €100,000 maximum.
- Provide an account of infringing sandals from 17 August 2024 onwards.
- Pay damages, to be assessed in separate proceedings.
- Pay more than €51,000 in legal costs.
What does this mean for businesses?
The judgment offers several lessons for businesses in design, retail, lifestyle, private labels, manufacturing, e-commerce and fast-moving consumer goods.
- Document transfers of intellectual property precisely, particularly in international structures. Where a business merges, demerges or sells shares over time, record clearly who holds each IP right. This avoids enforcement failing years later because the chain of title is defective.
- Remember that the overall impression is decisive: minor changes do not prevent infringement.
- Enforce consistently. Tolerating use or acting selectively may result in loss or restriction of rights.
- Check in good time whether older design registrations still provide protection.
Would you like to know whether your product is sufficiently distinctive or whether lookalikes expose you to risk? Julia van Leeuwen at Guldemond Advocaten can advise on protection, enforcement and product design.
