Trunki - Supreme Court Upholds Appeal

Trunki CRD

On 9th March 2016, the UK Supreme Court upheld the decision of the Court of Appeal in Magmatic Ltd v PMS International Group plc (the Trunki case) concerning a registered design for the popular Trunki children’s ride-on suitcase.

The decision has been noted in the media, not least because of the popularity of the Trunki product and the fact that the designer and company owner, Rob Law, was featured in BBC’s Dragons' den.

 

The original case involved a European Community Registered Design (CRD) owned by Magmatic for its popular ride-on children’s suitcase, known as the Trunki.  The CRD protecting it is shown top-left.  Readers should note that it is the CRD images that define the protection.

PMS produced a competing, lower cost product called the Kiddee Case.  Magmatic claimed its CRD had been infringed by PMS’s importation and sale of the Kiddee Case which in its view created the same overall impression on the informed user, i.e. parent or carer of children.

At first trial, the High Court agreed with Magmatic’s claim and found infringement.  However, the Court of Appeal subsequently overturned this with the view that the trial judge erred in certain areas of his assessment, a decision that the Supreme Court has now confirmed.

To summarise the reasons, the Appeal Court noted that the images submitted with the CRD application were not line drawings, but CAD images which gave the impression that the contrasting colours between the wheels and body of the suitcase, and also the fact it resembled a horned animal, were the striking features of the product.  Whilst there were notable similarities, the Kiddee Case did not give the overall impression of a horned animal and the wheels were of the same colour as the body.   

Comment: whilst frustrating for the design community (and indeed the judges had some sympathy for Magmatic) the decision confirms that registered designs do not protect ideas or concepts – they protect what is shown in the images filed with the design application taking into account what the intended customer would note as distinctive over related products already on the market. 

From a practical standpoint, black and white line drawings (without shading) tend to provide the best protection when filing registered designs, unless it is texture or colouring that provides distinctiveness to the product.  Registered designs provide a cost-effective and powerful was of deterring direct or close copying of original product designs.  Infringement claims can also be pursued through the small claims track of the IPEC, where the amount of monetary damage is relatively low.