20 May 2016Jurisdiction reportsMichiel Rijsdijk

The challenges of invalidating design rights

The case serves as an illustration of how the courts in the Netherlands interpret the criterion of ‘solely dictated by its technical function’.

In its decision in Philips v Remington, the Court of Justice of the European Union (CJEU) found in 2002 that the existence of technical alternatives does not change whether a feature of a design is dictated by its technical function and is therefore eligible for protection.

As a result, the existence of different ways to reach the same technical outcome is not the relevant test to decide whether the technical function exemption applies. This is the so-called multiplicity-of-forms theory. Philips actually concerned an EU trademark, but it is assumed that the case also applies to design law.

After the CJEU rendered this judgment the fear was that this would limit the scope of protection for RCDs.

The recent judgment by The Hague court shows the application of the Philips theory. Depending on your perspective it shows that the scope of protection offered to EU models in the Netherlands is despite, or because of, the Philips case.

Wibit-Sports v Aquaparx

Wibit-Sports and Aquaparx are both active on the market for inflatable water toys that are used by commercial parties, such as amusement parks. Wibit-Sports is the owner of several RCDs. The designs include waterslides, bounce mattresses and other floating water toys. Wibit-Sports invoked its RCDs and copyright against Aquaparx. As a defence Aquaparx claimed the designs were invalid.

The relevant test that the court applied is whether all design features of the RCDs are solely dictated by their technical function. The emphasis is placed on all features of the designs and that they are dictated only by the technical function.

Aquaparx’s claim concerns the floatability and horizontal surfaces of the water toys, which are both features of the RCDs However, the court found that the fact that several elements of the design must be floatable does not dictate the shape of the design. The inflatable toys were designed in such a way as to allow people to walk on them; according to the court, this merely means that the design must contain a horizontal upper surface.

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