Infringement Scotch & Soda down jacket – copyrights or EU design rights

Scotch & Soda sells down jackets since 2012. When Esprit launches a similar jacket in 2015, Scotch protests, claiming its copyrights (No European design was timely filed). Esprit stops the sale in the Netherlands and is willing to pay for the damages, but not for the whole European Union.

In Court, Esprit claims that the shape of the design is too trivial for protection by copyright. The judge disagrees. The jacket consists of several (commonplace) elements. The combination of these elements is sufficient to provide the jacket with a character of its own. The Esprit coat is almost an exact copy, making the same overall impression, and is therefore considered an infringement.
In Europe, copyright law is not yet harmonized. In the Dutch system Scotch & Soda is entitled to the copyrights, since it employs the designer, but in many other EU-countries such a provision does not exist. As a consequence, the claims for infraction of copyright are being rejected outside the Netherlands. It is a big shame that Scotch & Soda did not opt for protection by way of a registered EU-design. If that were the case, a judge would most likely have granted a prohibition and awarded damages for the whole of the European Union.

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?