Knaap Fatbike vs. Diablo Bike
It happened to Knaap, a manufacturer of innovative fatbikes: after months of work on their unique frame design, they saw how competitor Diablo Bike marketed an almost identical design. Knaap then started proceedings at the District Court of The Hague. Because Knaap had timely registered their frame design as a protected design, they had exclusive rights to use and market the design. This allowed them to successfully prove that Diablo Bike's frame did not create a substantially different impression than their own design. The court ruled that Diablo Bike did indeed infringe Knaap's design right.
Diablo Bike was prohibited by the court from further marketing the infringing frames. In addition, Diablo Bike had to inform its customers of the infringement and recall and destroy the remaining stock. Finally, Diablo Bike was ordered to pay damages to Knaap, the amount of which will be determined in separate damages proceedings.
What is design protection and what benefits can it provide?
Design protection allows business owners to protect the external features of their products, such as shape, color, texture and materials. By registering a design, you gain the exclusive right to use that design and can prohibit third parties from copying or trading the design without your permission. Thus, a design right can be very valuable when design and innovation of a product play an important role.
In addition, design protection strengthens your position against competitors and provides a basis for taking legal action against infringers. This not only helps protect your competitive advantage, but can also result in damages or sales bans for those who infringe.
Consistency with trademark and copyright law
Design protection does not stand alone. It often works in conjunction with other forms of intellectual property law, such as trademark law and copyright law.
Trademark law
While design protection focuses primarily on the external design of a product, trademark law protects the name, logos and other signs you use to distinguish your products or services. Thus, once you have come up with a name for your innovative product, it is important that you also register this name as a trademark in order to be optimally protected.
In the case between Knaap and Diablo Bike, although Diablo Bike had registered the trademark "Diablo," the infringement of Knaap's design was seen as an infringement of the exclusive rights Knaap had to the visual elements of its product. It is important to understand that even if a competitor uses a different trademark, they can still infringe on your design rights.
Copyright
In some cases, such as particularly creative or artistic designs, copyright may also come into play. This provides protection to works of literature, science and art, including graphic and industrial designs. Copyright arises automatically once a creative work is recorded, without the need for registration. While this provides protection, it can be difficult to determine the exact scope of that protection, especially for functional designs.
Registering a design right here provides additional certainty. It makes your design legally clearly protected, specifically focused on the external features. In the case at hand, Knaap also claimed copyright on the fatbike design, which provided an additional layer of protection against copying and counterfeiting. While copyright protects broadly, design rights provide a specific and powerful means of countering infringement. Together, these rights provide strong protection for your innovation.
Practical Tips
This ruling demonstrates the importance of a thoughtful intellectual property strategy. For business owners operating in industries where design and innovation are crucial, it is essential to protect not only the trademark, but also the design of your products. By using design protection, combined with trademark and copyright law, you can ensure that your unique creations are well protected from infringers and counterfeiters.
Some tips:
- Register your designs: Make sure you capture all the distinctive designs of your products through design registration.
- Additional protection: Combine design protection with trademark registration. Also make sure it is clear who owns the copyright to the design. This creates the broadest possible protection in case of infringement.
- Act quickly in case of infringement: As soon as a competitor copies your designs, it is important to take immediate action so that the maximum can be done to protect your business.
