The United Kingdom Supreme Court delivered its decision in the Trunki vs Kiddee Case design infringement matter in March 2016. In reaching its decision, the Court considered the extent to which a product’s surface decoration ought to be considered when determining infringement of a registered design.

Magmatic Limited (Magmatic) manufactures and sells children’s suitcases under the TRUNKI brand.  The Trunki suitcases are made to look like animals and are designed to be ridden on by children. Magmatic took steps to protect the design of the its Trunki suitcase by way of a Community Registered Design (CRD).

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Magmatic Ltd’s CRD 

PMS International Group PLC (PMS) began the manufacture of cheaper children’s suitcases made to look an animal or an insect called a “Kiddee Case”. Magmatic claimed PMS’ suitcase design infringed its CRD.  Initially Magmatic was successfully able to prove its claim in the High Court.  However, in February 2014, the England & Wales Court of Appeal over ruled this judgement stating that there was no infringement.  This was based on the different “overall impression” of the suitcases in comparison to Magmatic’s registered CRD.  Lord Justice Kitchin stated that the earlier High Court decision by Justice Arnold was founded upon various errors in his analysis that PMS infringed the CRD as well as the design right in four out of six designs by Magmatic. Kitchin LJ further stated that the design of the Kiddee Case “does produce on the informed user a different overall impression from that produced by the CRD”.  Kitchin LJ was of the view that a prominent characteristic of Magmatic’s Trunki CRD is that the handles and clasps make the suitcase look like a horned animal with a nose and tail.  These features are absent in the “Kiddee Case” design.

The Kiddee Case has stripes on its flanks and whiskers on both sides of the ‘nose’.  It resembles a tiger to an informed user, rather than a horned animal. Therefore, these factors produce a distinctively different impression from that of the CRD. This judgement was appealed by Magmatic. On 9 March 2016, the UK Supreme Court gave the final verdict on the matter and held that PMS did not infringe Magmatic’s design rights in its Trunki cases.  In reaching this decision, Lord Neuberger analysed the extent to which a product’s surface decoration ought to be considered when determining infringement of a registered design and, more specifically, when that registration has no decoration. Neuberger LJ upheld the decision by the England & Wales Court of Appeal, agreeing that PMS’ Kiddee Case surface design prohibits the case from conveying the same “overall impression” as the original Trunki design. Neuberger LJ went on to state that Justice Arnold of the High Court “misdirected himself” in his decision. 

The Supreme Court expressed that it is clear PMS “conceived the idea of manufacturing a Kiddee Case as a result of seeing Trunki, and discovering that a discount model was unavailable.” However, the purpose of the appeal was in relation to the design itself, not an idea or an invention.

PMS expressed the decision as a “victory for fair competition”, stating that PMS always conducts itself in a manner that is not contrary to the law and that it is impossible to confuse the Kiddee Case with another product especially as PMS does not share the same market as its competitors. The ruling now enables PMS to discard any negative reputation of “copying” or “pirating”.

The focus of the appeal was on the interpretation of images in the CRD in question.  The CRD did not identify any surface ornamentation which was found to reinforce the overall appearance of the design as a horned animal.  The CRD images also showed the shape in two contrasting colours which made certain features of the design stand out.  This effectively limited the protection afforded by the CRD to the shape in multi-colours rather than the shape itself.

The decision would seem to create uncertainty in UK design law in terms of the scope of protection afforded by a CRD and render the cost of design protection more expensive as it will require additional specialist advice and strategic thinking over and above the already complex UK design law.

This article was written with assistance from Mariyam Sheeneez.