The District Court of The Hague recently issued a judgment in a case involving well-known clothing brand O’Neill and Scandinavian clothing manufacturer L-Fashion. The subject: the design of a ski jacket.

O’Neill has been selling a ladies’ jacket since 2011. In 2013 O’Neill discovered that L-Fashion was selling a similar jacket (below).

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O’Neill

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L-Fashion

O’Neill claimed that it held design rights and copyright in the design of the jacket. According to L-Fashion, in 2005 it had already introduced a similar jacket to the market, meaning that the O’Neill jacket was no longer new and original. For that reason, L-Fashion argued, O'Neill did not have design rights or copyright.

Design law

To be entitled to design rights, the design must be new and have an individual character. A design is considered new if an identical design has not previously been made available to the public. Design rights are not only infringed if a design is identical, but also when it varies only with respect to unimportant details.

The judge first held that the O’Neill jacket was sufficiently different from the previous L-Fashion jacket, and thus O’Neill had a valid claim to the design rights for the design of the jacket. The next issue was whether L-Fashion had, in turn, infringed O’Neill's design rights.

According to the judge, the overall impression of the L-Fashion jacket did not differ sufficiently from that of the O’Neill jacket. There were too many similarities, including the colour, the pattern and the collar. The differences between the jackets were too small to compensate this.

Copyright

Because O’Neill’s design rights were due to expire shortly, the company also cited its copyright in the jacket. The judge was of the opinion that there was also a case for copyright infringement for the same reasons as set out in regard to design law.

The judge ordered that L-Fashion recall all the jackets by asking its buyers in the European Union to return all remaining stock.

Comment

The decision demonstrates the importance of protecting and monitoring IP rights. However, it is also sensible to conduct extensive market research before launching a product in order to prevent later issues – and to prevent the risk that customers will follow the wrong jacket down the slopes.

Bart ten Doeschate

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.