Decision Is A Massive Blow To Magmatic And Design Industry, Says IP Lawyer

The Supreme Court has today (9th March 2016) delivered its judgment in relation to the ride-on suitcase dispute between the makers of Trunki and the Kiddee case.

The Trunki suitcase first attracted attention when it appeared 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’.

On a technical level the case concerns whether ‘surface decoration’ is a relevant factor in determining infringement of a Registered Community Design (RCD).  Specifically in this case the Trunki designs consisted of computer generated designs as opposed to simple line drawings.  This case turns on whether, the surface decoration and colour contrast and not just the shape of a design are relevant and should be considered when determining infringement.

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

In 2013 PMS Magmatic’s High Court claim succeeded with Arnold J finding that its Registered Community Design (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 Community Design Registration by only taking into account the shape and ignoring all other aspects, including graphical surface design.

The case was heard by the Supreme Court in November 2015 and today Magmatic’s appeal was dismissed.

In delivering judgment the Court had sympathy for Magmatic and Mr Law, it noted that the idea of the Trunki case was a clever one, PMS had conceived the idea of the Kiddee Case  as a result of seeing the Trunki but said “Design Right is intended to protect designs not ideas”.

Expert Opinion

“This case shines the spotlight on the on-going battle between market-leading products borne out of creative design and those who produce invariably cheaper competing products which are similar but not identical.

“Today’s ruling will have far-reaching consequences for the design industry and will be seen as disastrous for those who have sought to protect their designs with Community Design Registrations as the scope of protection is now called into question. It is a massive blow to Trunki.

“It is estimated that around 30% of designs are registered using CAD. This decision means that any owners of Community Design Registrations that encompass CAD designs should now review their registrations and not only consider whether the designs actually give adequate protection for the products they are selling, but whether they would be able to stop competing products that feature more detail than the designs for which they have secured registration.”
Georgie Collins - Partner

Rob Law, the founder of the Trunki said: "We created an original product in Trunki and protected it by computer generated registered design – a process used to protect a third of designs across Europe.

"In my honest opinion, the Trunki was willfully 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.They’re effectively sending knights into battle without armour."

Commenting on the ruling, Kiddee Case founder Paul Beverley said: "It upholds the right of consumers to be able to choose competitively-priced products. We try always to work within the law and successive courts have agreed that there is no way our popular Kiddee Case can be mistaken for any other product.

"In reality we are operating in very different markets from our rivals and we have never been competing for the same customer base."