If the seller of a successful design doesn’t make a strong enough effort to prevent imitation, that design can become so common that the seller can no longer object to look-alikes on the basis of ‘slavish imitation’, based on Dutch general tort law.
This was decided by the Dutch Supreme Court (‘Hoge Raad’) in its decision of 19 May 2017 in a case about ‘slavish imitation’ of jewellery.
‘Mi Moneda’ (‘My money’ in Spanish) is a line of jewellery by a company called All Round, that consists of a pendant in three different colours (silver, gold and rosegold) with compatible coins (‘moneda’). The pendant comprises two parts connected by a hinge, which can be opened in order to insert one of several interchangeable coins.
A highly similar jewellery line is being marketed by Simstars under the name ‘Nikki Lissoni’, also consisting of pendants in three colours (silver, gold and rosegold), with a hinge that opens to make room for one of several interchangeable coins. Mi Moneda objected to this.
All Round apparently didn’t have a valid registered design right or its non-registered design right had already expired. Therefore All Round invoked the principle of ‘slavish imitation’.
In 2010 the Dutch Court of Appeals in The Hague considered that Mi Moneda had sufficient ‘distinctive character’ to take action against competitors who market needlessly confusing products. In 2012, however, the Court of Appeals of Arnhem-Leeuwarden came to the conclusion that the design had already been ‘diluted’ too much. According to the Dutch Supreme Court:
“The distinctive character of a product can be liable to reduction, even total phasing-out (‘dilution’) to the extent that a growing amount of similar products gain access to and maintain their position on the market. As far as slavish imitation of a product is concerned, the producers marketing the original product can, under circumstances, be required to expend considerable effort to inhibit the market entry of unauthorised copies of that product, in order to maintain the distinctive character of their own product”.
This is an important lesson: if you don’t keep the market ‘clean’, you can forfeit your right to take action against imitation. This rule does not officially apply in designs that are protected by copyright or a (registered) design right. These remain, in principle, protected even when counterfeit products flood the market. Nevertheless, taking consistent action against imitation is also advisable in those cases, because practical experience shows that the scope of protection regarding those rights decreases as well when a lot of similar product can roam the market freely.
Photo: HR 19 May 2017, ECLI:NL:HR:2017:938, (All Round / Simstars)