Registering new (Community) designs for small product design improvements/amendments can be quite tricky, as shown again by a decision of the interim relief judge of the court in The Hague, 20 February, 2015 (Koz Products BV v Adinco BV).

Facts

On 8 November 2005, Koz obtained RCDs (Nos. 000426283-0001 and -0002) for cable blocks: (see figure on the left). Subsequently, on 10 July 2006, Koz obtained RCDs (Nos. 000557350-0001 and -0002) for a similar product (illustrated on the right).

Koz commenced proceedings against Adinco, a former reseller of Koz’s cable blocks, alleging copyright infringement, unfair competition (slavish imitation) and infringement of both of its RCDs. The Adinco cable blocks are depicted on the right.

Interim Relief

Interim relief was denied. In the interim relief judge’s provisional opinion there was a serious risk that Koz’s 2006 RCDs would be declared invalid, either in main proceedings or in revocation proceedings before OHIM, because they lacked individual character over Koz’s 2005 RCDs. The parties agreed that the only difference between the 2005 and 2006 designs was the shape of the recesses at the bottom of the cable blocks. Although the parties also agreed that the degree of freedom of the designer in developing cable blocks is limited and for that reason the informed used will notice details, according to the interim relief judge the difference between recesses with one or three supports were too insignificant to create a different overall impression on the informed user.

The interim relief judge was also not impressed with Koz’s 2005 RCDs – finding that these also lacked individual character when compared to a cable block marketed by a German company Formzeug (illustrated, left). Adinco was able to convince the court that the Formzeug cable block had been on the market for nearly 10 years before the filing date of Koz’s RCDs, having been filed as a Gebrauchsmuster (DE 296 14016) in 1996.

Although Formzeug’s cable blocks do not use recesses at the bottom of the product, the interim relief judge ruled that Koz’s 2005 RCDs cannot derive individual character from these recesses, since these concern technical features. Also the other differences found were considered features that are solely dictated by technical function.

Koz’s copyright claims were rejected for similar reasons. The technical features included in Koz’s cable block were disregarded and in as far as the remaining features would allow for any creative choices, these we found too minimalistic to allow for copyright protection.

As regards the claim based on slavish imitation the interim relief judge ruled that Adinco took sufficient measures to prevent that the products at stake would cause confusion due to their similarity.

Comment

The decision seems a little tough on Koz. The recess with three supports appears to be a development, which was copied by Adinco’s product. If it was worth copying, it was worth protecting, as some have said. Even incremental improvements warrant design right protection – so long as the scope of the monopoly is similarly incremental. The EU-wide legislation cleverly achieves this, by making the infringement test the flip-side of the validity test.

The judgement, in Dutch, is available here.

 Prepared by Hidde and posted by Jeremy.