PMS International Limited has been successful in the Court of Appeal, overturning the High Court judgment which stated that their Kiddee Cases infringed Magmatic Limited’s design rights in relation to the Trunki, the famous ride-on suitcase for children (see earlier article here).
The Court of Appeal found that the High Court judge had erred in two respects. Firstly, he had failed to appreciate that the Trunki registered Community design (‘RCD’) was clearly intended to look like a horned animal. It was now held that, partly due to this factor, the insect and tiger versions of the Kiddee Case conveyed completely different impressions on the informed user in comparison with the RCD, as they appeared to have antennae and floppy ears respectively.
When this case was before the High Court, it was discussed how the RCD did not include any graphical designs on the exterior of the suitcase, whereas the Kiddee Cases bore a number of designs on their surface. At first instance, the judge sided with Magmatic who contended that the Kiddee Cases’ surface design should be ignored as there was nothing comparable on their RCD.
Now before the Court of Appeal, the Samsung v Apple tablet case ( EWCA Civ 1339) was recalled, in which it was held that the fact that Apple had no ornamentation on its registered design was an important feature in itself when comparing the Samsung tablet which did. The Court of Appeal held that the first instance judge was wrong to eliminate the Kiddee Cases’ surface decoration in its assessment of infringement because it significantly affects the overall impression of the designs (plainly neither was a horned animal, which is what the RCD was intended to represent).
Regarding the RCD in this case, the Court of Appeal found that the colour contrast between the wheels and the body of the design was a striking feature and this should have been taken into account in the comparison. This was the trial judge’s second error, and taking this feature into account assisted the Court of Appeal in a finding of non-infringement.
Even though the Court of Appeal agreed that the Trunki should be allowed a relatively wide scope of protection due to its innovative nature in the luggage market, as outlined above, the errors made by the trial judge meant that it could now form its own view on infringement. It was now found that the Kiddee Cases in question produced a different overall impression on the informed user than that of the RCD, and so there was no infringement. In particular, the judge noted that the RCD was a sleek, generally symmetrical stylised design that produced the impression of a horned animal. Conversely, the Kiddee Cases were found to be softer, more rounded designs which, at both a general and detailed level, conveyed a very different impression.
It will be interesting to monitor how Trunki reacts to this decision and, indeed, its competitors and the consumers themselves.