Colourful Rebel jumpers
Fashionable Amsterdam is mad about Colourful Rebel’s jumpers. The brand is clearly very popular and is becoming better known all the time. Riding along on that success sounds attractive, but how far can you take it?
In March 2016 Colourful Rebel discovered that the retail chain Hip&Go was having jumpers printed with the same print as its well-known “Rebel” and “Draak” jumpers. Colourful Rebel was not prepared to let that pass and brought proceedings, arguing that Hip&Go was infringing its Benelux trade mark, its copyright and its design rights. Let us look at the alleged infringements of those rights one by one.
Protection under trade mark law
A sign can obtain protection by being registered as a trade mark in the trade mark register, for example that of the Benelux. The sign can also be refused, because it lacks distinctive character or is contrary to public order and morality. A sign can be refused too if it is descriptive. That could be the case if the trade mark “Draak”, Dutch for dragon, were registered for toy dragons. Since the sign “Draak” was registered as a word mark for use in the production of clothing, that is not the case here.
Colourful Rebel therefore successfully registered the trade mark “Draak” with the Benelux trade mark register. That means that the use of the sign “Draak” is protected within the Benelux for the goods and services for which it is registered. The court accordingly held that Hip&Go was in breach by selling and advertising the jumpers bearing the “Draak” print. Given that there is trade mark infringement in respect of the “Draak” jumpers, any copyright or design right infringement is left undiscussed there. The sign “Rebel” was not registered in a trade mark register. In respect of the “Rebel” jumpers, copyright and design law therefore do come into play.
Copyright infringement
To enjoy the protection of copyright, Colourful Rebel’s jumpers must qualify as a work within the meaning of the Dutch Copyright Act. A work is regarded as the intellectual creation of its maker. The work must possess its own original character and bear the personal stamp of the maker. That means the form of the work may not be derived from that of another work, and that there must be a form which is the result of creative human labour and so of creative choices. Performances, ideas and styles are not protected as works.
The court held that the “Rebel” jumpers do not meet the threshold for copyright protection. In its view, Colourful Rebel’s ‘work’ consisted of no more than an existing word in a well-known typeface. That shows no sign of creative labour, and besides, there are a great many jumpers with a print on the front. The “Rebel” jumper is therefore not protected by copyright.
Protection under design law
Finally, Colourful Rebel argued that its jumpers ought to be protected on the basis of design law. To qualify for design protection, the design must be new and have individual character. New means that the design has not been made available to the public earlier. A design has individual character where the overall impression it produces on the informed user differs from designs already made available to the public.
The court took the view that the “Rebel” jumpers do not meet the threshold for design protection either. A word in a well-known typeface has no individual character, and the jumper, ordinary in other respects, produces no different impression on the informed user than the printed jumpers that already exist. The “Rebel” jumper is therefore not protected by design law either.
So if you are thinking of producing and selling printed jumpers, bear in mind that the print may well be registered in the trade mark register. And of course it may happen that Colourful Rebel’s next, enormously creative jumper does obtain copyright or design protection from a court. In the popularity of the “Rebel” jumpers you can at any rate share with an easy mind.
