09 March 2016

Supreme Court rejects appeal in Trunki design case

Magmatic Limited, the manufacturer of popular children’s ride-on wheeled suitcase, the Trunki, has failed in its appeal to the Supreme Court, with the Court confirming that the lookalike Kiddee Case does not infringe Magmatic’s Community Registered Design (images from the CRD and of the Kiddee Case are shown below). 

Whilst the Supreme Court expressed sympathy for Magmatic, given the original and clever nature of the Trunki design (and the circumstances in which the Kiddee Case design came about), it reiterated that the case was not about protecting ideas or innovation, but with the proper scope of protection of a design.  In particular, whilst this question was not necessary to determine for the appeal, Lord Neuberger (who gave the Court’s decision) gave a clear steer that absence of ornamentation can be a feature of a CRD:

Minimalism can self-evidently be an important aspect of a design just as intensive decoration can be.  It would be extraordinary if absence of ornamentation could not be a feature of a design....

The Court went on to refuse to make a reference to the EU Court of Justice on this issue; an understandable outcome (as it was not necessary for the case to be decided), but regrettable given that clarification on this issue would have been welcome.

Magmatic’s CRD and the Kiddee Case

KWM | Magmatic’s Community Registered Design (2 of 6 images shown)

Magmatic’s Community Registered Design (2 of 6 images shown)

KWM | PMS’s allegedly infringing design

PMS’s allegedly infringing design

Key points from the decision

The Supreme Court decided that the Court of Appeal had correctly identified three errors in Arnold J’s decision, and was justified in overturning his finding at trial that there was infringement.

First, Arnold J had failed to give proper weight to the overall impression of the CRD as a horned animal. The Supreme Court agreed that this was a significant point and he had overlooked it.

Secondly, he had failed to take into account the effect of the lack of ornamentation on the surface of the CRD, and the presence of such decoration on the body of the Kiddee Case. The Court of Appeal thought that the absence of decoration on the CRD reinforced the horned animal impression that it gave. The Supreme Court suggested there was limited force in this point, but Magmatic argued it raised a significant point of principle: can the absence of ornamentation, as a matter of law, be a feature of a registered design, and, if so, was it a feature of the CRD in this case?

The Supreme Court said that the Court of Appeal had not raised this as a free-standing contention and therefore it did not need to rule on this question. However, whilst obiter, Lord Neuberger was clear that the absence of decoration can, as a matter of principle, be a feature of a registered design. He stressed that this does not mean that an infringement claim will therefore necessarily fail when there is an absence of ornamentation in a registered design. However, if an alleged infringement does have ornamentation, this is then a factor that can be taken into account (as was the case, for example, in Samsung v Apple).

The Supreme Court rejected a reference to the EU Court of Justice on this issue, despite the Comptroller General of Patents, Designs and Trade Marks supporting a reference.

Thirdly, the Judge had ignored the colour contrast in the CRD between the body, including the horns (grey), and the wheels, spoke, strap and strip (black). The Court of Appeal was right to conclude that the CRD claimed not merely a specific shape, but a shape in two contrasting colours.

Lessons for design protection

The images that are used in an application for a registered design are of utmost importance, as they will determine the proper scope of protection of the registration. Designers must tread a careful line – if the design is at too general a level, there may be issued of validity over prior art; but if the design is too specific, it may then mean that it is not possible to enforce against similar designs. 

The decision discusses some of the challenges for designers in terms of how they represent their designs. In particular, it notes that, whilst each design must be considered in its own context, line drawings are “much more likely to be interpreted as not excluding ornamentation than a CAD image”. Further, the designer in this case had submitted CADs which showed the design with two different shades for certain aspects of the design: the Supreme Court said that the natural inference was that the components shown in black were intended to be in a contrasting colour. 

Accordingly, if a designer wishes to ensure that its design is not interpreted as excluding ornamentation, it should consider the use of line drawings, or should consider filing a number of applications to ensure that it has the broadest form of protection.

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