A registered Community design (RCD) presented in black-and-white protects against the use of the design in any colour (see, inter alia, Case T-68/10 Sphere Time v OHIM, para 82 (General Court). The District Court in The Hague recently applied this practice in its decision of 2 September, 2015 (Wibit-Sports GmbH v Aquaparx). In this respect, design law differs from the common practice on black-and-white trade marks adopted by OHIM in 2014 (see here).

Facts
The plaintiff in this matter, Wibit-Sports GmbH, a company that produces inflatable water toys for aqua-parks, is the owner of various RCDs, including Nos. 000206602-00001, 00863386 (0001 – 00021) and 001656752-0001, -0002 and -0003, some of which are depicted here.

Wibit-Sports commenced main proceedings against Aquapark Nederland BV and Leisure Parx BV, who exploit a waterpark in which various inflatable water toys were used, alleging copyright infringement, unfair competition (slavish imitation) and infringement of its RCDs.

Counterclaim proceedings
In the counterclaim proceedings, the defendants claimed that all the RCDs invoked by Wibit-Sports were invalid for lack of novelty and individual character. The counterclaim failed: according to the Court, the prior designs presented by the defendants created a different overall impression on the informed user. The Court also rejected the argument that the designs of the various water toys were solely dictated by technical function: the fact that the water toys should be able to float does not dictate the form of the toys in any way. Besides that, for being able to walk on the water toys, the only technical feature needed is a horizontal upper surface.

Infringement
In the main proceedings, as regards the design claims, the Court ruled that most of the water toys used by the defendants infringed the RCDs of Wibit-Sports, including the following (RCDs on the left; infringing products on the right):

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No infringement was found for amongst others the following water toy:

Different colours defence

One of the main defences put forward by the defendants was that all their water toys had completely different, distinctive colour combinations than those of the plaintiff. As a result, the alleged infringing products created a different overall impression on the informed user. The Court considered that when assessing the designs of Wibit-Sports, it should take the RCDs as a starting point. The fact that the corresponding actual products of Wibit-Sports would use different colour combinations was found irrelevant.    

Subsequently, the defendants argued that the distinctive colours used on their water toys would differ also substantially from the colourless and/or grey-scale RCDs of Wibit-Sports, creating in itself a different overall impression on the informed user. The Court also rejected this argument, considering that a colourless RCD indeed provides - because it leaves out colour -
‘(register-) clarity’ that the design is registered for the shape of the product, irrespective of its colour.

According the Court, the RCDs in various grey-scale tints (such as the one depicted above right,  RCD 00863386-0014), should be understood as designs of those shapes with application of either dark or light coloured surfaces, in whatever colour. The use of grey (which is in essence not a colour according to the Court) without mentioning that only specific grey tints were intended, makes the latter clear for a person consulting the register. The Court therefore rejected the defendants´ argument that the distinctive primary colours used by them would make that their products differed from the registered designs. 

Comment

In this judgment, the Court correctly applied the practice that an RCD presented in black- and-white protects against the use of the design in any colour. This judgment confirms that black-and-white line drawings filed as a design will thus give a broader scope of protection. On the contrary, if the image is filed in colour, it will be assumed (amongst others by OHIM) that colour is indeed claimed as one of the features of the design.

Interestingly, the Court’s position with regard to grey-scale colour contrasts appears to be slightly different with the contrasting surface shades relevant to assessment, as found by the Court of Appeal of England and Wales High Court (Patents Court) in the Trunki "horned animal" children's suitcase infringement dispute (already noted on Class 99 here, here and here).

According to the Appeal Court in Trunki ‘…an application for a Community registered design may be filed in black and white (monochrome) or in colour. If colour forms no part of the design then it is conventional to file the design in black and white. Similarly, if a particular colour does form part of an aspect of a design then it may be filed wholly or partly in that colour. So also, if monochrome colours are a feature of the design, this can be shown by placing the design against a background of a uniform but different colour. Of course it becomes more difficult if particular colours are not a feature of the design but colour contrasts are.’

The colour contrast between the wheels and the body of the Trunki RCD (depicted above) was found to be a fairly striking feature of the RCD which was simply not present in the accused designs and which the judge in first instance ought to have taken into account in carrying out the global comparison. Trunki goes shortly to the Supreme Court of the United Kingdom.

Either way, an appeal against the decision of the Court in The Hague on the point of the colour contrast will be difficult, as many of the water toy RCDs infringed by the defendants were filed not only in grey-scale colour contrasts, but also in black-and-white.

The judgment, in Dutch, is available here.

Prepared by Hidde Koenraad and posted by Jeremy.