Use of colour in registered designs

Wibit-Sports v Aquaparx

The decision issued by the Hague Court concerned a registered Community design (RCD) owner claiming infringement of its designs by a third party. The designs at issue were for a range of inflatable toys used in water parks.

The defendants (Aquaparx) argued that the colour combinations of the actual inflatable water toys used by the claimant (Wibit-Sports) were different. It claimed the different use of colour created a different overall impression on the informed user. It also believed the distinctive colours meant its designs were substantially different from the colourless or black and white images used in the claimant's RCDs.

Decision of the Hague Court

The court dismissed the defendant's arguments and found it had infringed the claimant's RCDs. In the decision the court applied the practice confirmed by the General Court of the European Union (GC) in previous decisions, namely:

• The similarity assessment is based only on the RCD images as filed. The actual colour of the RCD used in the market place is irrelevant.
• An RCD filed without colour or greyscale provides the broadest scope of protection as the design is registered for the shape of the product, irrespective of colour in use.
• Use of greyscale does not mean that the colour 'grey' itself is claimed, unless specifically stated in the application. In all other circumstances, greyscale indicates that sections of the design are to appear in colour.
• Use of greyscale in lighter and darker shades indicates sections of the design would be lighter or darker in colour.

Different approaches to the application of common practice

This case not only highlights the varying scope of protection that can be sought by use of colour in the design views of an RCD, but also provides an apparently different application of these principles from the recent Trunki Court of Appeal decision in the UK.

In the Trunki case the RCD in question was registered in greyscale. However, the judge found that whilst the RCD was not limited to any particular colour, the distinct contrasts between the wheels and strap which were in a darker tone to the body of the suitcase were to be seen as "striking features". The judge recognised that whilst an RCD filed without colour eliminated colour from the comparison with the alleged infringing article (see related decision P&G v Reckitt Benckiser - link given above), this did not prevent the defendant from relying on the lack of colour contrast in its own design.

The Trunki case has been appealed and a decision is awaited from the Supreme Court. It will be interesting to see if the Court of Appeal's application of the principles relating to colour in an RCD are successfully contested.

In short

This case serves as a helpful reminder on the varying scope of protection obtained purely by the use of greyscale, black and white, or colour in a design registration. The Supreme Court decision in the UK case of Trunki is eagerly awaited for possible further guidance.

Case details at a glance

Jurisdiction: the Netherlands
Decision level: Rechtbank Den Haag (Hague Court)
Parties: Wibit-Sports GmbH v Aquaparx Nederland BV
Citation: C/09/469900/HA ZA 14-839
Date: 02 September 2015
Full decision (in Dutch): http://dycip.com/wibitsvaquaparx
Related decision: Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch): http://dycip.com/ewhc3154