The design of clothing, such as jackets, trousers and shoes, can be protected in many different ways. Clothing design can be copyright-protected, design rights can be registered for clothing and unregistered community design rights can be invoked. Trademark rights are naturally also important for protecting clothing. But clothing is additionally protected against what is termed slavish imitation.

The District Court of The Hague recently decided in the case Coolcat/Nickelson that (specific quilted) jackets fall under the protection against slavish imitation. The District Court said that in order to successfully rely on slavish imitation, it is a requirement that ‘unnecessary confusion’ be caused among the public by the imitation of a product. According to the District Court, if the design of a product is imitated, unlawful slavish imitation also requires that the product that has been copied has its ‘own place’ in the market (distinctiveness).

The District Court compared the jackets from Nickelson (the products which were reportedly slavishly imitated) to other jackets from the existing design corpus to determine what place Nickelson’s jackets had on the market at the moment Coolcat put its own jackets on the market (which were reportedly a slavish imitation of Nickelson’s jackets). The District Court decided as follows:

‘In assessing the asserted unlawful act at the time of the market introduction by Coolcat, it must be determined what place Nickelson’s jackets had on the market at that time. After all, the asserted unlawful act started immediately with the market introduction. In the hearing Coolcat stated that its jackets had been for sale in its shops from July 2013. In this assessment, therefore (unlike in the assessment ex nunc), no jackets can be included which are not established to have already been on the market in July 2013. That is the case for the third-party jackets submitted by Coolcat, which were on the market in autumn 2013. The fact that these jackets belong to the 2013/2014 winter collections does not mean that they were already on the market in July 2013. They could just as easily have been introduced on the market in the months thereafter. For this reason, the illustrations of third-party jackets submitted by Coolcat have not been included in the assessment of the asserted unlawful act from July 2013. The District Court will include the jackets depicted in 2.6 in the assessment, since Nickelson itself asserts that these constitute the relevant market with respect to which its jackets distinguish themselves. It follows from that assertion that Nickelson regards these jackets as the relevant market for determining the distinctiveness of the Nickelson jackets. This also applies for the Coolcat jackets depicted in 2.5, which Nickelson has not contested belonged to older collections of Coolcat, which had already been put on the market in July 2013.’

It was ultimately decided that a particular jacket constituted a slavish imitation because it caused the danger of confusion. No injunction was ordered, however, since the jacket of the design on which Nickelson had based its demand for an injunction was no longer being put on the market: ‘After all, the design is no longer part of the market. There is therefore no longer an unlawful slavish imitation from the moment that Nickelson itself no longer markets the Selene design.’ The District Court had decided earlier that in the context of the injunction demanded, it is important for the future whether at the time the conviction was handed down, there was still a case of unlawful act by Coolcat (or the threat thereof). In this case that was no longer the situation.

On grounds of Article 3:296 in conjunction with Article 6:162 of the Dutch Civil Code, Coolcat can be required to provide a statement of the numbers of Krebel jackets bought in, sold and in stock, the purchase and sale prices for those jackets and the profit achieved with the sales, accompanied by an unqualified audit opinion. Nickelson made substantiated assertions that it had suffered loss as a result of Coolcat’s unlawful act, so that Nickelson has an interest in receiving the requested statement.

By Joost Becker