Trunki finds its Design Infringement case “Sat On” in the Court of Appeal

March 05, 2014

Child’s sit on suitcase not infringed by copy says UK Court of Appeal.

The Court of Appeal has overturned suitcase maker Magmatic’s previous win against PMS, a company which sold copies of Magmatic’s TRUNKI case. The TRUNKI is a sit-on suitcase which has been a phenomenal success in the UK, and PMS had knowingly set out to copy it. Whilst Magmatic had Community registered designs for the TRUNKI and also alleged that it had unregistered design rights, PMS pointed to differences in its case to say that the overall effect of the two cases was different and that as a result it did not infringe. Whilst the two cases shared an overall shape, had hand holds at identical places on the cases, had a curvy “waist” allowing the child to sit, had clasps which looked like noses and tails and shared the concept of the cases looking like creatures, the judge who gave the lead judgment decided that the differences in the PMS cases meant that they gave a different overall impression. These differences included the surface decoration on PMS’ case, the fact that PMS hand holds were shaped like antennae or ears rather than TRUNKI’s horns and that the wheels of the PMS case were partially covered. It is understood that Magmatic intends to appeal, and our initial view is that this would be the correct approach. PMS’ case copied a number of the key elements of the distinctive and innovative TRUNKI, and it appears from our reading of the decision of the Court of Appeal that the judge focused too much on perceived omissions in the earlier judgment (where Magmatic was successful) and not enough on the overall effect of all the copied elements. The case highlights the risks of litigation and the fact that in the path to an outcome there can be decisions which seem difficult to understand. If Magmatic do appeal (as it seems likely that they will) then it will be to the highest court in the UK, the Supreme Court. It may also be that a further issue will arise as to how the registration of the design is to be interpreted, and this may lead owners of design registrations to consider their coverage very carefully indeed.

If you have any questions concerning this case, please get in touch with your usual contact at Swindell & Pearson Ltd or at [email protected].