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Bag and baggage: everything you need to know about designs in one (suit)case

Tripping over a Trunki (the distinctive children's ride-on suitcase) has become a rite of passage in the departure lounge. Next time you see one, spare a thought for the originator, Magmatic, and its epic, but ultimately unsuccessful, journey through the Courts (PMS International v Magmatic Limited [2016] UKSC 12). 

Background

The innovative design of Magmatic's Trunki cases was bound to attract imitations. With this in mind, Magmatic applied for registered design protection and filed a series of CAD representations. Those images showed the main body of the case as a uniform grey but with a black strip, a black strap and black wheels.

The anticipated imitation came along in the form of PMS International's Kiddee Case and the battle commenced.

First instance

Arnold J held that the Community Registered Design (CRD) "is evidently for the shape of the suitcase and the proper comparison is with the shape of the Kiddee Case". He went on to state that, "when comparing the CRD with the Kiddee Case, the graphical designs on the surface of the Kiddee Case are to be ignored." 

On the basis of a comparison of the respective shapes essentially alone, Arnold J concluded that there had been infringement of the Trunki CRD.

Appeals  

The Court of Appeal reversed the decision and the matter progressed to the Supreme Court.

The Supreme Court addressed three issues that it felt were critical in deciding whether there had been infringement by PMS: 

  • The first issue related to consideration of the overall impression of the designs. The overall impression of designs is central to questions of both validity and infringement. The Court's view was that the overall impression given by Magmatic's CRD was that of a horned animal and that this was different to the overall impression given by the Kiddee case; its features being insect antennae and animal ears. 
  • The second issue concerned the absence of decoration on the CAD images.  Minimalism often forms a fundamental aspect of the appearance of a design and the conclusion was that, in principle, lack of ornamentation was capable of protection as a positive feature. However the Court avoided the issue as to whether the absence of ornamentation on the Trunki CRD amounted to a feature of the Trunki design.  
  • The final issue considered was the two tone colouring in the Trunki CRD. Trunki's CRD showed black wheels and straps in contrast with its grey body and horns. The contrast was held to be a feature of the design and contributed to the finding of a different overall impression. However the Court did make it clear that black and white or monochrome representations will cover all colours. It follows that where colour is shown in the representations, that colour will form part of the design.

Conclusion

As a result of these findings the Court found that the Kiddee Case created a different overall impression from the Trunki CRD and so did not infringe. With Trunki's innovative design, its originators must be very disappointed with the outcome.  

Take away points

Careful consideration should be given to what aspects of the design can potentially be protected. Registering a simple line drawing with no tonal contrasts could be preferable in many circumstances. Line drawings are advantageous as they provide better protection of the shape per se. Where colouring and decoration are important, photographs or CAD representations are likely to be preferred as they can easily show subtle shadings and contours as well as decoration such as colours and ornamentation. The UKIPO is expected to publish guidance shortly.  

Clearly one way of reducing the risk associated with the choice of representations filed is considering multiple applications based on different forms of representation. Equally registrations for different parts of the product should be considered. Given that fees for filing are set to fall considerably in the UK, multiple applications should certainly be considered for full protection of designs. 

This publication is intended for general guidance and represents our understanding of the relevant law and practice as at May 2016. Specific advice should be sought for specific cases. For more information see our terms & conditions.

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