January 2019. Last week we told you about Edelman, a Christmas decorations supplier that lost a design claim at the District Court in Amsterdam. But this new update proves that the tables can turn. In early January, Edelman resubmitted the case to the District Court in The Hague. This time it was successful, and competitor Casa was told it had infringed Edelman’s design rights.

Left: Edelman’s European design registration; right: Casa’s infringement

Design rights

Edelman previously lost its case in Amsterdam simply because the District Court in the capital wasn’t competent to issue a ruling on European design rights. Only the District Court in The Hague is competent to hear such cases. So Edelman duly started a new procedure in The Hague.

Infringement after all

The Court in The Hague overturned the previous ruling, concluding that Edelman’s design rights did after all meet the statutory requirements, that the design was indeed new and that it had individual character. And since Casa’s design was very similar to Edelman’s, there was no alternative but to regard it as a design infringement. So no more Casa Christmas tree!

Difference between copyright and design rights

The case usefully illustrates the difference between copyright and design rights. While the Christmas tree isn’t original enough to be covered by copyright, the criterion of originality doesn’t apply to protection of designs. Design rights only require the creation of a ‘new’ design with individual character, which sets the bar much lower.

This design registered by Edelman didn’t cross the finish line due to its lack of individual character

Not all popping corks

But it wasn’t all popping corks for Edelman. The Court withheld protection from one of its designs, a star outlined in tiny lightbulbs. It concluded that the star design was a common one, which meant it had no individual character and therefore didn’t qualify for protection.

Bas Kist