What does the Supreme Court’s ruling in the “Trunki” case mean for designers?

Background

Magmatic’s Trunki case, an animal like ride-on children’s suitcase, has been a huge commercial success, and can be seen for instance in airports around the world. Perhaps unsurprisingly this inspired a competitor, PMS, to create a rival product known as the Kiddee Case.

The appearance of the Trunki case is protected in the EU by a Registered Community Design (RCD) (and by certain elements of UK unregistered design law, to which related infringement proceedings had already been concluded).

Accordingly, Magmatic sued PMS for infringement of its RCD.

At first instance, the High Court considered that the Trunki and the Kiddee case created the same overall impression, and therefore the Kiddee Case was held to infringe the Trunki RCD.

The Court of Appeal however reversed this decision, and Magmatic subsequently appealed to the Supreme Court, where their appeal was unanimously though sympathetically rejected.

The decision

The Supreme Court’s judgement can be viewed in full, along with images of the Trunki and Kiddee Case here.

The three main factors relevant to the finding that Magmatic’s Trunki RCD was not infringed by PMS’s Kiddee Case are:

1. The colour contrast between Magmatic’s Trunki RCD and PMS’s Kiddee Case

The Trunki RCD consists of 3D computer assisted drawings (CADs) in which the body of the Trunki appears in a uniform shade of grey, but significantly the strap and wheels are coloured in black. The High Court Judge found that the RCD was “evidently for the shape of the suitcase” and therefore ignored the decorations on the Kiddee Case.

Both the Court of Appeal and Supreme Court found that it would be natural to infer from the Trunki RCD that the components shown in black (the strap and wheels) were intended to be a different contrasting colour from the body of the Trunki case [see para 52].

The Trunki RCD did not therefore claim merely a shape, but a shape in two contrasting colours [see para 53]. This meant that the wheels and handles of the Trunki case stood out as “striking features”, whereas the wheels on the Kiddee Case were barely distinguishable from the body, and the handles and body were the same colour. Accordingly, the overall impression produced by the Tunki and Kiddee Case was different.

2. The overall impression of Magmatic’s ‘horned animal’

The High Court judge did not give proper consideration and weight to the significance of the appearance of the Trunki as that of a ‘horned animal’. PMS’s Kiddee Case by contrast gave the impression of an insect with antennae or an animal with ears. This constituted an important difference between the overall impression given by each suitcase, and contributed to the Supreme Court’s ruling that the Kiddee Case did not infringe the Trunki RCD [see paras 21, 37 and 39].

3. The absence of surface decoration in Magmatic’s Trunki RCD

There was a clear lack of surface decoration to the body of the Trunki in Magmatic’s RCD. This reinforced the overall impression of the Trunki case as that of a ‘horned animal’, and served to differentiate it further from the animal or insect like surface decorations on the Kiddee Case. The Supreme Court commented obiter that "it seems plain to me that absence of decoration can, as a matter of principle, be a feature of a registered design. Simplicity or minimalism can notoriously be an aspect of a design, and it would be very curious if a design right registration system did not cater for it" [see para 44].

Practical lessons to be learned from the Trunki litigation

This unfortunate outcome for Magmatic emphasises the importance of getting the representations, or drawings, for a registered design right. No matter how original and innovative a product is, a design registration only protects the appearance of the product rather than the clever idea or concept underlying it. It is therefore important to ensure that the design registration applied for properly shows the important features or appearances of the product, as it is the drawings or images filed with the design application which exclusively identify the monopoly the designer is claiming.

To achieve this, in the UK and EU it is possible to file a single design application covering a number of different designs. This can be used to protect multiple aspects of a design, such as the colour and/or shape of part or all of the design. It is therefore often advisable to file an application covering a number of separate designs to particularly protect or stress the most important features of a design.

Although a design registered in black and white or in greyscale is not limited to any particular colour, the Trunki case reminds designers of the need to be very cautious when using greyscale to ensure that features that are not intended to be different colours are not represented in contrasting shades. The outcome may have been more favourable for Magmatic had they registered the design of the Trunki using simple line drawings, rather than shaded CAD drawings which, as in the Trunki case, may inadvertently highlight shading, contours, colours and ornamentation which are not actually intended to be claimed as features of the design.

Whilst the registered design system can seem quite straightforward, the Trunki decision shows that interpreting registered designs and the protection they afford can be far from straightforward.

We therefore recommend that designers seek professional assistance in considering the possible variations of a design to protect when filing design applications.

If you have any questions concerning the outcome of the Trunki case, or would like more information about applying for design registration, please get in touch with your usual contact at Swindell & Pearson, or with Natalie Dyer at [email protected]. Natalie is a trade mark advisor and does a lot of work with Midlands manufacturers helping them to protect their branding and identities.