Not so friendly fire

Happy Cocooning B.V. (www.happycocooning.com) is a Dutch company that develops and sells gas fire places. In 2009 it enlarged its product range with so-called “cocooning tables”; square or rectangular blocks in composite or wood including a gas burner. One of its bestseller products, a square cocoon table in composite, was registered as part of a multiple Community design (Locarno class 23.03 “heating systems”) in 2009.

Arpe B.V. (www.arpe.nl) is a Dutch wholesaler of gardening products including gas fire places.

In September 2015, at the Spoga trade fair (the largest garden fair in the world) in Cologne Happy Cocooning discovered that Arpe was offering table gas fire places under the name Thyone which, according to Happy Cocooning, showed great similarity with their cocooning tables. The Thyone is a square composite block including a gas burner, finished in a so-called wood-look.

In order to answer the question whether a new design infringes an older, registered design, it is necessary to determine whether the new design gives a different overall impression. If that is not the case, there may be an infringement.

At the trade fair Arpe received a cease and desist request from Happy Cocooning. Since Arpe did not comply, on 4 September 2015 they were informed by email that if they sold infringing fire places on the Benelux market, legal steps would follow. On 15 March 2016 Arpe’s Chinese Thyone supplier filed a request for an invalidity declaration with the EUIPO regarding one of Happy Cocooning’s registered multiple designs (not the design at issue). By decision of 4 May 2017 the EUIPO rejected this request.

Summary proceedings followed in The Netherlands and on 20 April 2016 the summary proceedings judge in The Hague concluded that Arpe’s design failed to provide a different overall impression and therefore the Thyone was infringing Happy Cocooning’s design.

However, on appeal, according to the Appeal Court in The Hague, Arpe’s wood-look fire place did provide a different overall impression. In particular, the Appeal Court held the opinion that the gas fire registered by Happy Cocooning had a sober minimalist feel while Arpe’s wood-look gave it a more rustic appearance. The dark colour of Happy Cocooning’s registered design in addition was important since this too was not shared by Arpe’s design.

The Appeal Court concluded that, since there were more differences than similarities between the designs, there is no design infringement. Therefore, the decision at first instance was overturned and Happy Cocooning B.V. was ordered to pay (part of) the legal fees of Arpe to an amount of € 18.000.

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