The High Court recently found that design rights and copyright in the well-known Trunki ride-on suitcase for children were infringed by a Hong Kong-based competitor's ride-on suitcase for children called the 'Kiddee Case'. The decision means that the makers of the Trunki can apply for a pan-European injunction preventing any further sales of its competitor's infringing products. The defendant is appealing to the Court of Appeal, so this case might run a little further yet.


Trunki design
The claimant's founder first developed a ride-on suitcase for children as part of a national competition, the BASF/Institute of Materials Design Award. The claimant's founder had the idea of using injection, rather than rotational moulding, to produce a product that could be ridden by children but also hold considerable storage space. The design was called 'Rodeo'. It ultimately won the award, which was presented to the claimant's founder at a public ceremony in 1998.

The claimant's founder went on to develop the Rodeo design into what became known as the Trunki.

Kiddee Case design
The defendant purchased a Trunki in 2010 with the sole intention of producing a similar, albeit cheaper, version. The defendant's product came to market in December 2012. The defendant did not dispute that its product had been inspired by the claimant's design.


Defendant's challenge to validity of Trunki design
The most interesting aspect of the court's decision was its assessment of the validity of the claimant's Trunki design in light of its earlier Rodeo design. Under Article 7(1) of the EU Community Designs Regulation (6/2002), Community registered design protection is not afforded to a design that has been made available to the public before an application for registration is made for such a design, unless the disclosure in question "could not reasonably have been known in the normal course of business to the circles specialised in the sector concerned". The court accepted that the award had been presented at a public ceremony and it was not unreasonable to assume that some members of the suitcase industry attended the ceremony.

However, despite the award and public ceremony, the court held that the Rodeo design was still relatively obscure and could not form part of the design corpus that an informed user would have been aware of at the time of the claimant's application for Community registered design protection in the Trunki suitcase. Instead, the design corpus that had existed at the time of the claimant's Community registered design application consisted of adult clamshell suitcases. It was therefore held that the Trunki design had been the first of its kind, which gave a different overall impression to the informed user, namely parents and children. In light of the substantial departure that the claimant had made from the design corpus and the considerable design freedom that a designer of ride-on suitcases for children had at the time, the claimant's Trunki design was entitled to a broad scope of Community registered design protection.

Claimant's infringement claims
Once the issue of the validity of the Trunki design had been established, the court turned to the claimant's claims for infringement, which were based on three sets of IP rights. A summary of the court's assessment in each of these areas is set out below. However, it is safe to say that this was a relatively straightforward case of infringement on all fronts.

Community registered design
Although the Community registered design and the Kiddee Case design were not identical, there were sufficient similarities between them for an infringement. The design of the Kiddee Case depicted the overall shape of the claimant's Trunki product. The court subsequently held that both designs produced the same overall impression.

UK unregistered design rights
The claimant alleged unregistered design right infringement in six elements of its Trunki design. However, the court found that two elements – the outside of the Trunki clasp and the combination of all six elements – were not protectable as unregistered designs, as they were methods or principles of construction covering a multitude of different specific appearances, which were closer to patent claims than designs. Although this was an initial blow to the claimant's case, its remaining four unregistered designs were found to be valid. The claimant's case was further bolstered by the defendant accepting that its Kiddee Case design was exactly or substantially similar to three of its unregistered designs – the metal parts of the Trunki clasp, the Trunki clasp as a whole and the Trunki tow strap. Finally, although the defendant refuted that the same could be said for the design of the inside of the Trunki (including the inside straps and pouch), relying on a number of alleged differences as evidence, the court ultimately disagreed.

The claimant owned copyright in its packaging artwork, which had inspired the defendant in preparing its own packaging artwork. The court did not believe that the similarities between the two amounted to a reproduction of a substantial part of the claimant's artwork. However, the defendant conceded that it had copied the claimant's safety notice and was thus liable for copyright infringement in this regard.


The most interesting aspect of this decision was the court's consideration of the 'obscure disclosures' exception to novelty under Article 7(1) of the Community Designs Regulation, rather than its assessment of the claims for infringement. The exception is rarely the subject of court decisions, so any judicial commentary is always particularly valuable. In considering whether the exception applied in this case, the court said that the key issue to determine was whether the earlier Rodeo design could not reasonably have become known in the normal course of business circles specialising in suitcases as a result of the award's public ceremony in 1998. Although ordinarily the Rodeo design would form part of the design corpus, its relative obscurity meant that it did not in this case, and so it could not be used to invalidate the claimant's Community registered design.

For further information on this topic please contact Clive Thorne or Tom Cadwaladr at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (clive.thorne@rpc.co.uk or tom.cadwaladr@rpc.co.uk).

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