In the latest instalment of the ongoing saga involving the Trunki case, 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

Bristol-based firm Magmatic Limited (Magmatic), founded by Dragon's Den reject Robert Law, owns the Community registered design for Trunki children's ride-on suitcases (CRD). Magmatic brought a claim in respect of the Kiddee case created by PMS International Limited (PMS) - admittedly 'inspired' by the Trunki design – arguing it infringed the CRD.

High Court decision

At first instance Arnold J focused only on the shape of the two products, confirming that the CRD protected the shape of the Trunki case only; the proper comparison is between the CRD and the shape of the Kiddee case. The reason being that the CRD is a monochrome Computer aided drawing (CAD)and Arnold J confirmed that where a design was not registered in colour, only the shape should be considered. This left other features of the Kiddee case design – most notably surface decoration – ignored and consequently Arnold J held that the Kiddee case infringed the CRD as it created the same overall impression on the informed user. PMS appealed this decision, and so the story continued.

Court of Appeal decision

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

1 Surface decoration

Kitchin LJ held that the CRD, when considered as a whole, gives 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".

2 Colour contrast on the CRD

Although Arnold LJ was right to find that the monochrome CRD 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 has no colour contrast on the body of the case, and so the judge was wrong to ignore this aspect of the CAD representation.

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

Supreme Court's decision

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

Lord Neuberger, delivering the judgment, agreed that Arnold J overlooked the importance of the horns on the CRD and that the Court of Appeal was right in finding that the overall impression of the CRD was that of a horned animal and this was not given sufficient weight at first instance. The ruling further held that the Kiddee case's surface decoration is enough to prevent the case from creating the same "overall impression" as the Trunki. Magmatic's indication that a CJEU reference was necessary to determine the surface decoration point was refused, with Lord Neuberger stating that a reference would be futile as the CJEU 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 they register. Magmatic's registered design for the Trunki case includes 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.

Whilst the Court had sympathy with Rob Law and Magmatic because Trunki was a "clever idea", it was swift to reinforce the positon that "Design Right is here to protect designs, not ideas". Businesses will need to consider carefully the overall impression created by their registered designs. Some practical points are set out below:

  • Those seeking to rely on registered designs need to 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.
  • Whilst 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.