Last week the UK The Supreme Court ruled against the designer of the award-winning Trunki children's suitcase. PMS International Group's competing product, the Kiddee Case, does not infringe Magmatic's registered design rights.
While this is not a shock, (the Court of Appeal came to the same conclusion) it leaves product designers with a problem. What form of protection is appropriate for a new product type like the Trunki case? And when using design right, how best should you frame your application to maximise the scope of protection?
Community Registered Design, or CRD, is an EU-wide right. It offers protection to features of a product's appearance for up to 25 years from the filing date. To gain protection it should be new and have “individual character”. The protection it gives extends to any design that does not produce a different overall impression on an informed user.
Designer Robert Law filed a CRD in June 2003 with a series of monochrome representations of his design for a fun children's suitcase, eg:
Products made to this design, sold as the Trunki, have been internationally successful, with an estimated 20% of British 3-6 year olds owning one!
PMS set out to produce a discount version of the Trunki, and came up with the Kiddee Case:
Magmatic sued PMS for infringement of its CRD.
In 2013, expert IP judge Arnold found for Magmatic. The Kiddee Case did produce the same overall impression on young children and their parents. He had a moment's hesitation over an earlier version, the Rodeo, that had been made public in 1998, but concluded that the Rodeo was too different to present a problem.
But PMS appealed and won, and then on a final appeal to the Supreme Court, PMS won again. The Kiddee Case did not infringe. Why not?
The Supreme Court said that the designs were too different. Magmatic's CRD gave the impression of a horned animal while the Kiddee Case looked more like an insect with antennae or an animal with ears. There were also important differences in the contrasting wheels and strap and the presence or absence of surface decoration.
The Supreme Court expressed sympathy for Magmatic, saying in the decision:
“It is a conclusion I would have reached with some regret, as the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever; as Arnold J said at para 16 of his judgment, “[t]here is no dispute that the Trunki was an innovative design” and it “has won numerous awards and has been a significant commercial success.” Furthermore, it appears clear that Mr Beverley of PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design.”
The decision has surprised many, and invited suggestions that the CRD would be improved by the possibility of including a statement to clarify what the intended scope of the registration is. Designers preparing material for filing a CRD will now have to take extra care in how they present their innovative products.
- avoiding differences in tone in a monochrome design, to avoid giving the impression that particular parts must contrast with the overall product.
- including representations with and without surface decoration.
- including drawings and photographs.
And where a product embodies a technical advance, patent protection may be more appropriate.