Registered design litigation rarely reaches the highest court in the UK but on Wednesday 09 March 2016 the Supreme Court will give its decision on the Magmatic v PMS case, which concerns the design for the famous Trunki children's ride-on suitcase: https://www.supremecourt.uk/cases/uksc-2014-0147.html.

The outcome of the Trunki case is of great interest since it involves a key legal issue relating to the scope of protection conferred by registered designs in the European Union. That issue is: to what extent should surface decoration be taken into account when considering infringement of a registered design where that registration has no such decoration? Registered designs are accessible in cost and process terms, and certainly commercially valuable IP, but clarity on their scope of protection is obviously highly desirable, especially where those designs may be significant departures from previous designs and products. Such new and innovative designs, which may involve significant design work in their creation, ought to attract commensurate protection. Indeed, the lower courts in the UK have typically recognized that general principle. The outcome of the Trunki case, which concerns a very well-known and widely recognized product design, should provide some much needed clarity on this important legal issue.

UK press commentary (November 2015)

  • BBC News (interview with Richard Willoughby of D Young & Co LLP): www.bbc.co.uk
  • The Guardian (interview with Richard Willoughby of D Young & Co LLP): www.theguardian.com
  • ExecReview (interview with Richard Willoughby of D Young & Co LLP): www.execreview.com

Trunki in the UK courts

At first instance, the High Court in London held that PMS's Kiddee cases infringed Magmatic's registered design for the Trunki suitcase.

However, on appeal this was overturned, the Court of Appeal finding that the Kiddee cases produced a different overall impression when compared to Magmatic's registered Community design. As a result, the Court of Appeal found there to be no infringement. This was a somewhat controversial decision, in particular since in coming to that conclusion the Court of Appeal had at least in part taken the surface decoration on the Kiddie cases into account. Magmatic's design registration shows no surface decoration and under the law as apparently explained in previous cases, surface decoration in the accused infringements ought not to have carried weight. For various reasons, the Court of Appeal applied that law in a slightly different way. Given the importance of this issue to the assessment of registered designs generally, and perhaps in light of some negative commentary on the decision in the Court of Appeal, the Supreme Court decided to take Magmatic's further appeal.

Comparing the PMS products and Magmatic registered Community designs

As indicated above, the Court of Appeal noted that surface decoration and colour were important when considering the overall impression created by the two allegedly infringing Kiddie case products.

Shown below is an illustration showing the "Trunki" registered Community design alongside similar views of the two Kiddie cases in issue. To the extent it may be said that there is some surface decoration in the Trunki design, it results from the tonal contrast between the dark wheels and carrying strap of the suitcase and the light body of the suitcase. The suitcase body is however shown as being plain and un-ornamented. The Kiddee case products, by contrast, have extensive decoration in the form of stripes and whiskers. The Supreme Court will consider the legal significance of that difference.

About registered designs

Under EU design law, a design can be registered for: "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation". In short, design rights protect the visual appearance of a product.

Other intellectual property (IP) rights relevant to a product protect the technology embedded in it or the process by which it may be made (patents), the brand names or logos of the manufacturer/seller of the product (trade marks); and any text, images or sounds associated with a product (copyright).

Designs may well be the unsung hero of the IP world. Often overlooked, they can be a cost effective means of protecting the aesthetic appearance, or the look and feel, of products. Their commercial advantage is significant in terms of their low cost (when compared to patents for example), the speed in which they can be registered, and the length of their protection (up to 25 years – 5 years longer than a patent). They are also relatively inexpensive to enforce.

To obtain a valid registration a design must be new (ie, not the same as any design already available to the public) and have 'individual character'. The test for individual character is often the most contentious. It is subjective and requires that the design as registered produces a different 'overall impression' on the 'informed user' as compared to designs already in existence at the time it was filed. This same test is used to assess infringement, this time when comparing the registered design with the alleged infringement.

If you are interested in seeking design protection for any of your products or associated packaging and get-up, we strongly recommend speaking with an IP specialist.