This 'case about cases' highlights the risk of disclosing new designs before protecting them by registration. The specific disclosure took place at an award ceremony, early on in the product’s development, but it’s equally risky to show new products at trade fairs or demonstrate them to potential buyers without adequate protection.
'Trunki'™ is a ride-on suitcase for children. It was the first child’s ride-on suitcase, and the only prior design for such a product was the 'Rodeo', which was a prototype created by the designer of Trunki.
Magmatic Ltd manufactures Trunki cases and has achieved huge commercial success, following an appearance on the 'Dragon’s Den' TV show. It sells Trunki cases in 97 countries, and it estimates that in 2011, 20% of 3-6 year olds in the UK possessed one. Magmatic sued PMS International Ltd, importer and seller of the Kiddee Case, for infringement of its Community Registered Design. (It also claimed infringement of its unregistered design rights, and its copyright in the artwork for the packaging and in a safety notice.) PMS International admitted that the Kiddee Case was inspired by the Trunki. The court found that PMS International had copied it, directly or indirectly.
One of the interesting questions raised by the case was whether disclosure of the earlier Rodeo design at an award ceremony in 1998 meant that the Trunki design was not new when the Community Design application was made in 2003, because the design had already been made available to the public. Under the Community Design Regulation (6/2002/EC), a design must be new and have individual character to be registrable. It will be considered to be new 'if no identical design has been made available to the public'. It will be considered to have individual character 'if the overall impression it produces on the informed user differs from the overall impression produced… by any design which has been made available to the public'.
PMS International argued that the Rodeo design was identical to the Trunki design and had been made available to the public, and and therefore the Community Design registration for the Trunki was invalid.
However, there is an 'obscure disclosure' exception in Article 7(1) of the Community Design Regulation, if the disclosure (such as exhibition at a trade fair or use in trade) 'could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned', within the EU. The court held that the Rodeo design was made available to the public at the award ceremony, and as it was a well-known award and the theme was luggage, people connected with the luggage trade could have attended the award ceremony and seen the Rodeo design. Therefore the 'obscure disclosure' exception did not apply.
The court went on to consider all the similar and different elements between the Rodeo and the Trunki (shape, handles, clasps etc). Fortunately for Magmatic, it concluded that the overall impression created by the Trunki Registered Design was different to that created by the Rodeo.
The court then compared the Kiddie Case to the Trunki Registered Design, and held that the overall impression was the same. Therefore PMS International had infringed Trunki’s Community Registered Design.
The case highlights the need for caution when creating a product similar to one that is on the market. PMS International gave evidence that they told their Chinese manufacturer to avoid similarities to other cases on the market, but they admitted that the Kiddie Case was inspired by the Trunki, of which they had samples. The court’s decision showed that they had not differentiated their product sufficiently.
The case also demonstrates the risks involved in publicising a new design before seeking registration to protect it. Where the design is created by a student (as here) and is disclosed at an awards ceremony, it may be unrealistic to expect the student to apply to register it in advance. However companies which create innovative designs should be aware of the risks of failing to protect them before disclosing them. Any disclosure which makes the design public in any part of the world will make it unregistrable, unless the 'obscure disclosure' exception applies so that the relevant industry in the EU would not have been aware of it; or unless it is disclosed under conditions of confidentiality. Companies which create designs should therefore consider one or both of the following before disclosure:
- applying to register the design
- insisting that non-disclosure agreements (NDAs) are signed by anyone outside the company.
Registration fees are very reasonable (starting at €350 for a Community Registered Design and £60 for a UK registered design) and can be a very worthwhile investment.
Preserving the novelty of inventions is just as important, as it will not be possible to register a patent if the invention has already been disclosed.