Wahl against Kappershandel
Court of The Hague 30 October 2019, IEF 18788; ECLI:NL:RBDHA:2019:11620 (Wahl v. Kappershandel)
Wahl c.s. produces products for the beauty and hairdressing industry and supplies products in the Netherlands through various distributors, its own website and social media. One of the products is the Premium Attachment Combs of which Community Design Wahl USA is the proprietor. Through its webshop, Kappershandel sells professional hairdressing and beauty products of various trademarks in the Netherlands and Belgium, including combs under the designation StyleME. Wahl claims that the StyleME combs infringe the Premium Attachment Combs design. The combs are almost an exact copy of this PAC design. Wahl's claims are rejected. Among other things, it is considered that the actual use of the design can serve to clarify but not to extend the protection of the design. This is to prevent that parts of the design that have been explicitly placed outside the protection could still be included trough ‘the back door’ through the use of dotted lines. The legal certainty of third parties would be too much jeopardized.
4.9. On the basis of this existing designs, it is for the time being insufficiently certain that the court on the merits or the EUIPO will recognize a sufficiently distinctive design in what remains. It is important in this respect (as already considered in 4.7) that the use of materials claimed by Wahl et al. in the design registration has not been claimed, so that considerations in this respect cannot play a role. Although it is conceivable that the clip, while retaining the technical function of the must-fit on the Wahl clipper linked to the round shape for safe use, can be executed in a number of different forms, this does not mean that the choice for this clip creates a different general impression with the informed user. The same applies to the shape of the small plate attached to the comb. This is upfront too banal to create a different general impression compared to the existing designs.
4.10. This preliminary assessment would not be different if the actual use of the design were to be taken into account. This cannot lead to parts of the design which have been explicitly placed outside the protection through the back door by the use of dotted lines being included in the protection again. The legal certainty of third parties would be too much jeopardized. The actual use of the design could serve to clarify but not to extend the protection.
4.14. In view of the substantiated objection of Kappershandel with regard to its own place on the market, the Court in preliminary relief proceedings is of the opinion that Wahl et al. did not sufficiently substantiate or made plausible its argument in this respect. It has not submitted any evidence whatsoever of its alleged own place on the market, including its bald assertion that everyone in the market would recognize the Premium Attachment Combs as originating from Wahl et al. That is also insufficient in the context of interlocutory proceedings.