The challenges of invalidating design rights


Michiel Rijsdijk

On September 2, 2015 the Court of The Hague passed a judgment in a case between Wibit-Sports and Aquaparx. Wibit-Sports invoked its copyright and registered Community designs (RCDs) covering several inflatable water toys for use in amusement parks. In response Aquaparx claimed invalidity of the RCDs owned by Wibit-Sports, stating that those designs are solely dictated by their technical function.

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. 

"The relevant test that the court applied is whether all design features of the RCDs are solely dictated by their technical function."

For other elements, such as the rounded edges and hourglass-shaped sides, Aquaparx did not state which technical functions these elements are supposed to have. In the court’s opinion, Aquaparx failed to adequately support its claim that all design features are solely dictated by their technical function.

The application by The Hague court of the Philips judgment shows the difficulty of invoking the invalidity of a design because of its technical function.

The case cited above confirms that attempts to invalidate a design because the design has a technical function is challenging. In order to be invalid, a design needs to be solely dictated by its technical function, which means that all essential features of the design have to be dictated by the technical solution which the design provides. The existence of essential features which are not solely dictated by a technical function means invalidity based on the technical function will not be successfully invoked.

Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at: 

Michiel Rijsdijk, Arnold + Siedsma, Philips v Remington, Court of Justice of the European Union, registered Community designs,