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Designers and yards: protect your work

The designers of the distinctive ride on Trunki children's suitcase (Magmatic) have lost their case in the Supreme Court against PMS International Limited (PMS), the manufacturers of cheaper copycat suitcase products.

The Supreme Court’s decision is a timely reminder for yacht designers and yards of the steps that need to be taken when looking to protect designs against copying. 

We summarise the case and actions you should take to protect your work.

Magmatic Limited v PMS International Limited [2016]

Before launching its new Trunki suitcase range, Magmatic had taken the sensible step of seeking to protect the design by applying to register the design as a Community Registered Design across the EC.  Magmatic may therefore have felt confident it would have the upper hand in court when PMS entered the market with a closely derivative suitcase.

Unfortunately for Magmatic, the Supreme Court decided that the computer simulated images of a prototype that were submitted with the application for the Community Registered Design only afforded limited protection for the specific original features shown in those images. The PMS product was sufficiently different from the Magmatic prototype images not to infringe. This was the case even though side by side comparison of the finished products showed greater similarities.

Protecting your work

The ruling is relevant to yacht designers and yards and how they should go about protecting their work. Careful consideration should be given to what aspects of the design can potentially be protected and then choosing images to best highlight the overall design as well as certain specific design features. The advantages of line drawings is that they can be interpreted as covering a broader range of designs rather than one specific iteration shown in a simulated model. This makes it harder for copies to be allowed at law. 

Given the relatively low marginal cost of registering designs, we recommend consideration is given to making multiple applications for registered design protection highlighting both general and specific features of the design. This will maximise the protection afforded to those designs and help to warn off those looking to emulate too closely.

For more information contact James Jaffa, superyacht lawyer in TLT's Superyacht team on +44 (0)333 006 1476 or james.jaffa@TLTsolicitors.com, or Nick Fenner, partner in TLT's Intellectual Property team, on +44 (0)333 006 1416.

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

by James Jaffa

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