A Right (Design) Carry-On!

By Briony Pollard and Serena Totino

Designers will be disappointed by the recent Supreme Court decision in the long running Trunki (suit) case between Magmatic and PMS International, which finally put to bed whether surface decoration could and should form part of the global comparison test when assessing infringement of a Registered Community Design (RCD).

In 2013 Magmatic Ltd., manufacturer of ‘Trunki’, the ride-on suitcases for children, attempted to enforce its RCD against PMS International Group plc, importer and seller of the ‘Kiddee case’ in the UK and Germany.

Both Trunki and Kiddee cases are designed to look like animals, both have four wheels, a clasp at the front and a saddle-shaped top making the cases easy for children to ride on. The differences between the cases are largely limited to colour and the ‘protuberances’, which look like horns in the Trunki case and antennae or ears in the Kiddee case.

The fact that the Kiddee case was evidently inspired by the Trunki RCD was not in question; the significance of the case was the scope of the protection.

At first instance, Arnold J held that the Trunki RCD was plainly for the shape of the suitcase. The scope of protection then should be determined by the graphical representation of the RCD and the information such representation conveyed. Any graphical design on the surface and any differences between the Trunki RCD and the Kiddie case should not be considered, as they were not able to affect the informed user’s overall impression. As such Arnold held that the same overall impression was created on the informed user and therefore found infringement.

On appeal the court held that Arnold had erred in his decision. PMS submitted that the overall impression created by the Trunki RCD was significantly influenced by the horns (ie it was obviously intended to create the impression of a horned animal), the lack of ornamentation and the “striking” colour contrast between the body of the suitcase and the wheels. The court agreed and held that such surface decoration was relevant to the global comparison test, as it affected how the shape strikes the eye and in doing so, altered the overall impression – producing a different overall impression. This was the case, irrespective of the fact that the Trunki RCD did not have surface decoration.

The Supreme Court agreed with the Court of Appeal and rejected Magmatic’s argument that the absence of ornamentation in a RCD could not, as a matter of law, be a feature of a RCD. The Supreme Court restated that while it might lead to regrettable a result for the design industry, design right protects designs ie the appearance of a product, and not the idea for a product.

One of the practical implications for designers is that when filing design applications, they need to give careful consideration to what is depicted in the registration, and what is not. For example it might be prudent for designers to file line drawings, which depict no contrast in colour, rather than images depicting tonal differences. In any event, applicants should always think proactively about submitting images which best reflect their interests. Designers should also be alive to the balancing act to be done between filing a design that is too general as prior art may invalidate it and, a design that is too specific, as it will not provide any protection against very similar designs.

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