Decision Will Have ‘Far-Reaching’ Implications, Says Lawyer

On Wednesday 9 March 2016, the Supreme Court will deliver judgment in relation to a dispute concerning the design of the Trunki-ride-on suitcase. 

At a basic level what lies at the heart of the case is how designers construct their designs and register their design rights so as to be able to fend off lookalike type products.

From a technical legal perspective the case concerns whether ‘surface decoration’ is a relevant factor in determining infringement of a Registered Community Design (“RCD”).  In this case the Trunki designs consisted of computer generated designs as opposed to simple line drawings, the central issue is whether, the surface decoration and colour contrast and not just the shape are relevant and should be considered when determining infringement.

The Trunki suitcase first attracted attention when it failed to get funding on the BBC’s Dragons Den show.  It subsequently received international acclaim and became instantly recognisable with young children at airports across the globe.  The company behind Trunki, Magmatic Ltd, launched legal proceedings in 2013 against a competitor, PMS International Limited who produce ‘the Kiddee case’.  The Managing Director of PMS explained that having seen the Trunki when travelling, he recognised its qualities and thought there was a gap in the market for a discounted product.

The design industry says it will be disastrous for small and large businesses alike if the Supreme Court rules that there is no infringement of Trunki’s RCD by PMS.  On the opposite side of the fence, companies such as PMS say that businesses cannot be stopped from fairly competing and by RCD (or indeed any other IP right) where the designs are different.  The ‘case’ has bounced around the Courts and now awaits the Supreme Court’s final determination as to whether PMS’s Kiddee Case is an infringement of the Trunki RCD.

The Trunki RCD is shown below along-side the corresponding views of the Tiger and Ladybird Kidde Case.

The Trunki RCD comprised 6 computer generated, monochrome representations of the suitcase. As the images were monochrome the design was not limited to a specific colour.

In 2013 PMS Magmatic’s High Court claim succeeded with Arnold J finding that its RCD was infringed by PMS’ Kiddee Case.

PMS appealed and in 2014 the Court of Appeal overturned the High Court decision stating that Arnold J had wrongly interpreted the Trunki RCD by only taking into account the shape and ignoring all other aspects, including graphical surface design.

The Court of Appeal found that Arnold J had made two mistakes in arriving at his decision:

(1) He failed to carry out a global comparison of the Trunki RCD, taking into account all aspects of the designs and that it was intended to create the impression of a horned animal. When considering the Kiddee case, the impression it created was influenced by the two tone colouring of the body of the suitcase and the positioning of spots on the sides of the suitcase; overall this looked like a ladybird and the handles on the forehead look like antennae.  Looking at the Kidee Tiger case, the stripes on the flanks and whiskers on either side of its nose convey to the user that is it’s a tiger with ears – it is not a horned animal and produces a different overall impression from that of the RCD.

(2) In relation to colour, whilst the Court of Appeal agreed that the Trunki design was not limited by colour since it was registered in monochrome (as opposed to colour combinations), that relative shading in the design had to be taken into account. In particular, the distinct contrast in the registered design between the wheels and the remainder of the body was a striking aspect of the design as a whole which gave a different overall impression to that of the Kiddee Case.

Lord Justice Kitchin who delivered the judgment said:

“The overall impression created by the two designs is very different. The impression created by the RCD is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.”

Expert Opinion

“The effect of this case could be very wide-ranging. It will affect all businesses across the design industry who seek to protect the shape or appearance of a whole or part of a product, including colours, materials and surface decoration if they are depicted. Of particular relevance are businesses in the fashion, furniture and consumer goods industries, including those involved in packaging.

“If the Supreme Court rules against Magmatic and in PMS's favour, this could have a serious effect on businesses who have registered Community Design Rights using CAD drawings without surface decoration. If this is the case, these businesses would be well-advised to review their design registrations and consider whether they will need make new registrations for their designs using line-drawings, assuming any applications for registration would not be anticipated by the earlier registrations.

“On a more general level, the case illustrates the on-going battle between market leading products borne out of creative design and those who produce similar but not identical competing products.”
Georgie Collins - Partner