Facts

The French company OHARA SAS commercializes jewellery and fashion accessories including a feather-style bracelet named the 'AHE design' designed by Philippe Audibert in the spring of 2015. TAWO is a Belgian company founded in 2018 that designs and sells hand-made silver accessories for men, including a bracelet entitled the 'Feather Cuff'. In light of the perceived similarities between both bracelets, OHARA and Audibert sent a cease-and-desist letter to TAWO and its founders, and to three of its B2B-customers, claiming infringement of their copyright in the 'AHE design'. Following this notice, TAWO's B2B-customers discontinued the sale of TAWO's 'Feather Cuff' bracelet. TAWO also decided to cease temporarily the sale of its 'Feather Cuff' bracelet. On 19 December 2019, OHARA and Audibert summoned TAWO and its founders for infringement of their alleged copyright in the 'AHE design'.

Decision

By a decision of 21 January 2021, the Brussels Enterprise Court held that OHARA and Audibert's 'AHE design' did not meet the requirement of originality. OHARA and Audibert argued that the originality of their 'AHE design' was formed by the fact that the author had consciously chosen an original combination of tight and unbent feather hairs that run diagonally from the coil of the feather to the sides. The Court applied the case-law of the European Court of Justice in Infopaq, Painer and Dataco, and ruled that while jewellery designs, in principle, can qualify for copyright protection, the author must be able to prove that his alleged work of authorship, in this case the 'AHE design', is his own intellectual creation reflecting his personality and expressing his free and creative choices. According to the Court, OHARA and Audibert had failed to provide such proof. The Court made clear that even though copyright law has a broad scope of application, this is not a free pass and the 'originality' requirement must still be met. The Court specified that it is not enough to combine non-original elements to create an original work; the combination itself must also be original. 

Importantly, TAWO had invoked several prior bracelet designs from French designer Yves Saint Laurent and from Navajo artists such as Chris Charley that were almost identical to the AHE bracelet, thereby making it plausible that, given their professional experience, OHARA and Audibert were aware, or could reasonably have been aware, of those prior bracelet designs. OHARA and Audibert were not able to refute this prior art. Consequently, the Brussels Enterprise Court denied copyright protection of OHARA and Audibert's Navajo feather-style bracelet design and decided that TAWO remained free to copy it. The Court clarified that OHARA and Audibert could not claim protection for a design that they had copied themselves in the first place.
The Court also dismissed OHARA and Audibert's claim for parasitic competition. The fact that TAWO used a similar but very common black packaging was not sufficient to create confusion, noting also the clear difference between the trademarks TAWO and Audibert. 

Additionally, the Court granted TAWO's counterclaims for frivolous lawsuit and trade disparagement. It viewed the cease-and-desist letter sent by OHARA and Audibert to customers of TAWO as contrary to fair practices. Consequently, the Court condemned OHARA and Audibert to a lump sum indemnity of EUR 2.500 for frivolous lawsuit and ordered them to cease any further acts of trade disparagement vis-à-vis TAWO's customers under penalty of EUR 5.000 per breach, with a maximum of EUR 75.000.

The decision (in Dutch) can be read here. The decision is still open to appeal.

Our IP team in Antwerp represented TAWO in this case. If you want to know more about this case or about IP protection/enforcement in general, please contact michael.devroey@bakermckenzie.com