The Supreme Court's Trunki decision: what it means for your registered designs and actions you should consider now

Published on 18th Mar 2016

On 9 March 2016 the Supreme Court handed down its much anticipated judgment in the Trunki case, PMS International Limited v Magmatic Limited [2016] UKSC 12, dismissing the appeal filed by Magmatic, owner of the Community Registered Design (CRD) for Trunki ride-on suitcases.

The Supreme Court thereby left intact the Court of Appeal’s decision
that PMS International’s Kiddee Case
did not infringe the design rights held by Magmatic.

Background

Bristol company Magmatic, founded by Rob Law in 2003, is the
company behind the Trunki ride-on
suitcase and the owner of a CRD for a clamshell ride-on suitcase designed to
look like an abstract of an animal with horns. PMS International is the company
behind Kiddee Case, which is sold in
two basic versions – an animal version with handles formed to look like ears,
and an insect version with handles formed to look like antennae. These are
decorated to create a variety of models including a tiger and a ladybird.

Scope of protection
of a registered design

Community Design Right is governed by Council Regulation
(EC) No 6/2002. The Regulation provides that a design shall be protected to the
extent that it is new and has individual character.  ‘Individual character’ means that the overall
impression on an informed user viewing the design clearly differs from that
produced on him by the existing CRD. 
Similarly, a product infringes a CRD if it does not produce a different
overall impression on an informed user.

First instance
decision…

At first instance, Arnold J held that the Kiddee Case did infringe the design
rights registered for the Trunki,
taking into account the shape of the cases but ignoring markings on the side
and the eyes at the front.   The judge
characterised the overall impression of the CRD as ‘sophisticated, sculpted,
modern’, and concluded that the Kiddee also gave that impression.

The Court of Appeal…

In the Court of Appeal, Kitchin LJ giving the lead judgment identified
three main criticisms of the High Court judgment and reversed the decision.

  • First, the Judge had failed to give proper weight to the overall impression of the shape of the design as an animal with horns, which was significantly different from the impression made by the Kiddee case with its the ears or antennae.
  • Second, the Judge had failed to take into account the reinforcement of the impression of a horned animal by the absence of surface decoration on the CRD (although the Trunki cases as sold were indeed decorated as animals).
  • Third, in stating that the claim was solely in respect of the shape of the design the Judge had failed to take into account the two-tone feature of the design, including wheels which strongly contrasted with the body. The Kiddee Case had concealed wheels, so this feature was absent.

The Supreme Court…

The Supreme Court upheld the Court of Appeal’s decision,
albeit commenting that the reinforcement provided to the overall horned animal
impression by the absence of surface decoration could be given only minor
weight.  Furthermore, Lord Neuberger
confirmed that where designs are shown in colours, the colours are claimed,
while a black and white drawing or photo covers all colours. The choice of contrasting
monochrome colours in the design registration was deliberate, and meant that
the trial Judge was wrong to hold that the registered design was simply a claim
for a shape. As it was not just for a shape, the presence of contrasting
colours should be taken into account when assessing the overall impression.

Magmatic suggested that a reference should be made to the
European Court of Justice in relation to whether the absence of decoration can
be a design feature.  However, citing a
number of English, German and CJEU decisions Lord Neuberger rejected its request,
stating that the “absence of decoration can, as a matter of principle, be
a feature of a registered design”.

Reactions

Trunki designer
Rob Law was reported as “devastated and bewildered by this judgment, not
just for ourselves but for the huge wave of uncertainty it brings to designers
across Britain. In my honest opinion, the Trunki was wilfully ripped off. We
stood up to this behaviour, held it to account and took our case all the way to
the highest court in the land – only for the judges to rule that we are not
protected against the copy.”

Mr Law has led a #ProtectYourDesign campaign on Twitter,
garnering support from a number of UK designers and entrepreneurs including the
Brompton Bikes boss, Will Butler-Adams and the Grand Designs presenter, Kevin
McCloud.

What does this mean
for your business?

1. Careful consideration should be given in relation to the way in which designs are represented in registrations.

2. Businesses who have registered designs using monochrome drawings without surface decoration should consider reviewing their design registrations. Designers may wish to consider making new registrations for their designs using black and white line drawings to potentially increase the scope of their design protection.

3. When considering the protection of new product designs, designers should consider registering a number of registrations including both simple line drawings and computer generated representations.

Clearly, the decision by the
Supreme Court to uphold the Court of Appeal’s judgment will not be welcomed by
many businesses in the UK. While it provides some much needed clarity around
the scope of protection that registered designs offer, the decision is likely
to hit the design world hard. A lot of businesses are likely now to be
revisiting their registered designs and their IP strategies overall.

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* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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