In the latest instalment of the ongoing saga involving the 'Trunki' suitcase, the Supreme Court has unanimously dismissed the appeal filed by Magmatic. This means that the Court of Appeal judgment stands, which held that PMS's 'Kiddee Case' did not infringe the registered design rights in Magmatic's Trunki case because the "overall impression" of the two products was sufficiently different.

Background

Magmatic Limited owns the Community registered design for the Trunki children's ride-on suitcase. Magmatic brought a claim in respect of the Kiddee Case created by PMS International Limited – which was admittedly 'inspired' by the Trunki design – arguing that it infringed the registered design.

High Court decision

At first instance Justice Arnold focused only on the shape of the two products, confirming that the Community registered design protected the shape of the Trunki case only; the proper comparison was between the registered design and the shape of the Kiddee Case. This was because the registered design was a monochrome computer-aided design (CAD) and the judge confirmed that where a design is not registered in colour, only the shape should be considered. This left other features of the Kiddee Case design – most notably, the surface decoration – ignored and the judge consequently held that the Kiddee Case infringed the registered design, as it created the same overall impression on the informed user (for further details please see "Trunki successfully wheels out design rival before High Court"). PMS appealed the decision.

Court of Appeal decision

In a lead judgment from Lord Justice Kitchin, the Court of Appeal overturned the first-instance decision, finding that Arnold had erred in principle in two significant aspects:

  • Surface decoration – Kitchin held that the Community registered design, when considered as a whole, gave the impression of a horned animal. Further, the decoration of the Kiddee Case "significantly affects how the shape itself strikes the eye" and is "plainly not a horned animal".
  • Colour contrast on the Community registered design – although Arnold was right to find that the monochrome Community registered design was not limited to particular colours, the distinct contrasts in colour between the wheels and strap and the rest of the suitcase were distinctive design features. The Kiddee Case had no colour contrast on the body of the case, so Arnold had been wrong to ignore this aspect of the CAD representation.

Magmatic was subsequently given permission to appeal to the Supreme Court.

Supreme Court decision

After recognising that the Kiddee Case was "very similar indeed" to the Community registered design, the Supreme Court unanimously dismissed Magmatic's appeal and stated that there would be no reference to the European Court of Justice (ECJ). This means that the Court of Appeal judgment stands and that PMS's Kiddee Case did not infringe the registered design rights.

Lord Neuberger, delivering the judgment, agreed that Arnold had overlooked the importance of the horns on the Community registered design and that the Court of Appeal was right in finding that the overall impression of the registered design was that of a horned animal and this was not given sufficient weight at first instance. The Supreme Court further held that the Kiddee Case's surface decoration was enough to prevent the case from creating the same overall impression as the Trunki. Magmatic's indication that an ECJ reference was necessary to determine the surface decoration point was refused, with Neuberger stating that a reference would be futile, as the ECJ would likely answer that the matter is one for a national court to decide.

Comment

A key point for designers to take on board following the Supreme Court judgment is that they should be careful about the nature of the designs that they register. Magmatic's registered design for the Trunki case included details such as high colour contrast exposed wheels and a body shown to be contrasting in colour from its attachments, which means that their design encapsulates much more than the overall shape of the product. These factors helped to make it possible for PMS to create a product sufficiently different from the Trunki to avoid the allegations of registered design infringement.

While the court sympathised with Magmatic because Trunki was a "clever idea", it was swift to reinforce the positon that design rights are intended "to protect designs, not ideas". Businesses will need to consider carefully the overall impression created by their registered designs. Some practical points are as follows:

  • Those seeking to rely on registered designs must ensure that such designs capture exactly what they are seeking to protect.
  • It may prove prudent to file a series of designs, ranging from a simple shape design to more detailed designs incorporating any unique features and surface ornamentation, to maximise protection.
  • While CAD images are increasingly popular in design registrations, traditional line drawings are more likely to be interpreted as not excluding ornamentation.

It is clear from this decision that ensuring adequate design protection is as vital, yet more challenging, than ever.

For further information on this topic please contact Jeremy Drew or Chloe Johnston at RPC by telephone (+44 20 3060 6000) or email (jeremy.drew@rpc.co.uk or chloe.johnston@rpc.co.uk). The RPC website can be accessed at www.rpc.co.uk.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.