The ‘Trunki’ ride-on suitcase is well known as ’the one that got away‘ from the UK reality television programme ‘Dragons’ Den’, which features entrepreneurs pitching their ideas to secure investment finance from a panel of venture capitalists. Following its appearance on the TV show seven years ago, when no Dragons decided to invest, the Trunki has been a commercial success. It is estimated that, in 2011, 20% of UK 3 to 6 year olds possessed a Trunki.
In a High Court judgment, Magmatic Limited v PMS International Limited  EWHC 1925 (Pat), it has been held that Magmatic’s Community Registered Design (CRD) for the overall shape of the Trunki, is infringed by PMS’ ‘Kiddee Case’, which was admittedly ‘inspired by’ the success of the Trunki product.
Following an application in March 2013, the case was expedited due to the upcoming summer holiday period being a peak time for Trunki sales.
It was held by the judge, Mr Justice Arnold, that the Kiddee Case infringed the CRD which depicted the overall shape of the Trunki together with four UK unregistered design rights which covered the tow strap, lock and interior retaining straps/pocket.
It was noted that the Trunki was the first product of its kind, differing from previous suitcase designs, and that there was a high degree of design freedom in the area. Consequently, the Trunki benefitted from a wide scope of protection.
PMS attempted to rely on a piece of prior art called the Rodeo in order to invalidate the CRD. The Rodeo was an early concept design for the Trunki, which the designer had entered into a student design competition in 1998. Magmatic argued that the Rodeo fell within the obscure disclosures exception in Article 7(1) Council Regulation 6/2002, which would mean that, due to the small size of the competition, the Rodeo would not be deemed to have been disclosed and therefore not be prior art. The relevant legislation reads that “a design shall be deemed to have been made available to the public… except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sectors concerned”.
Arnold J clarified that this was an objective test and referred to the sector of the potential prior art, and not the sector from which the relevant CRD came. Further, it was held that the burden of proof when assessing the exemption falls on the party relying on it. It was held that the Rodeo was to be viewed as prior art, since the design competition was well-known, and since the theme had been ‘luggage’, it was possible that people from the luggage industry may have attended and seen the Rodeo design. Nevertheless, ultimately the CRD was still valid as it created a different overall impression on the informed user. However, interestingly, Arnold J stated that due to its relative obscurity, the Rodeo would not form part of the design corpus of which the informed user would be aware for the purposes of assessing infringement.
The case also dealt with the often controversial topic of surface ornamentation when assessing design infringement. The CRD did not include any graphical designs on the surface of the suitcase, whereas the Kiddee Case bore a number of designs on its surface. Magmatic held that these should be ignored; PMS felt that they should be taken into account.
Arnold J acknowledged that there was legal precedent in favour of both positions – the approach taken in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd  EWCA Civ 936 (that the CRD is evidently for a shape) was preferred over the court’s findings in Samsung Electronics (UK) Ltd v Apple Inc  EWCA Civ 1339 (where it was held that an important feature of the design was the absence of ornamentation, so that the addition of surface ornamentation on the design alleged to infringe could have weight, albeit only slight).
There were brief submissions by both sides in relation to Magmatic’s allegation of copyright infringement of the artistic works on the packaging of the Trunki.
Whilst it was admitted by PMS that the Kiddee Case packaging was inspired by Trunki’s and that there were stylistic similarities, it was held that a substantial part of the artwork had not been copied.
The case highlights the difficulty of pleading the ‘obscure disclosures’ exemption when assessing novelty and individual character. It also provides further confirmation that registered design infringement is to be considered primarily within the context of shapes – surface ornamentation on an allegedly infringing design is likely to be taken into account in only exceptional circumstances.