Wibit-Sports GmbH, a company that makes inflatable toys and structures for use in water parks is and the registered proprietor of a variety of such designs, brought proceedings against Nederland BV and Leisure Parx BV (together the "Defendant's") alleging copyright infringement, unfair competition and infringement of its registered designs.
In a counterclaim, the Defendants claimed that Wibit-Sports' registered designs lacked novelty and individual character and were therefore invalid. The counterclaim failed on the basis that the prior designs raised by the Defendants' created a different overall impression on the informed user. The District Court in The Hague also dismissed the argument that the toys solely dictated by technical function as the only requirement in making a floatation toy was that the there be a horizontal upper surface.
In relation to the main proceedings, the Defendants denied infringement of the registered design on the basis that all their floatation toys were of a different colour to that of the Claimant. Further, the colours of the Defendants' products were significantly different to the grey scale/colourless design drawings submitted for design registration, which they contended created a different overall impression on the informed user.
The Court rejected both arguments equally. In relation to the difference in colour between the two designs, the Court found that the colour variation to be irrelevant. With regard to colour variation between the final product and the design drawing on the design register, the Court found that a colourless design drawing makes no provision as to the colour of the final product and the design right vests in the shape of the design, irrespective of colour.
This decision is of particular interest in the design field as the Court is essentially saying that a design drawing in black and white offers protection of all subsequent colours, whereas as a design incorporating a particular colour would be read as seeking protection of the design in that colour as a feature of the design. Likewise, in relation to grey scaled tinted images, the Court's decision is that it should be understood as meaning areas representing a dark or light coloured surface.
The decision on grey scale is in contrast to the Court of Appeal's decision in the "Trunki" case which, although making the point that if a design does not limit itself to colour, then colour should be eliminated from the design, held that monochrome colour contrast in that case was a striking feature of the registered design which was not present in the alleged infringement.in: Case Law, Designs, News