Most of us first became aware of Magmatic Limited’s (Magmatic) Trunki® children’s suitcase when the creator Robert Law appeared on the BBC’s television programme Dragons’ Den. Although none of the Dragons invested, the Trunki case went on to be a success cornering the market in children’s suitcases.
In 2013 Magmatic issued proceedings against PMS International Limited (PMS) for infringement of their European Community Registered Design (RCD, Registration No. 43427-0001), as well as a number of unregistered rights, for importing and selling a product called the “Kiddee Case”. The proceedings were initially heard in the High Court, but the High Court judgment was then appealed to the Court of Appeal and then on to the UK Supreme Court.
Two images from the Trunki RCD (left) compared the PMS’s Kiddee Case (right)
On 9 March 2016, the UK Supreme Court issued their judgment (see here) upholding the Court of Appeal’s judgment that PMS International Group Plc (PMS) did not infringe Magmatic’s RCD. In short, this was because the Kiddee case was seen as forming a different overall impression from that of the RCD.
The judges took great care in explaining the reasoning behind the judgment. However, to cut to the chase, for businesses trying to work out how this decision affects them, there are three take-home messages that arise from the judgment:
Great care should be taken when choosing the images that are to be used in an RCD application. The images define the scope of protection afforded by the RCD, and so what it protects will be limited in accordance with all features of the design shown in the images.
Unless it is a fundamental part of the appearance of your product, it is advisable to avoid colour and contrasting tones (or shading) in the images for such an application. Black and white line drawings of the product are strongly preferred since these will generally be interpreted as showing the external shape or contouring only, without limitation as to surface decoration (or lack thereof).
It is worth businesses taking advantage of the ability to obtain UK and European registered designs for a relatively small cost by applying for multiple designs focusing on the same or similar products. This is especially the case since multiple designs can be filed easily, and official fee discounts are available for filing more than one design in any one application. This allows the protection afforded by a company’s registered design portfolio to mark out a greater territory than any single design while allowing flexibility in the subject matter of each individual design.
Magmatic did not succeed here because their design was deemed to be too restrictive in terms of the contrasting shading and restrictions placed on the RCD by the type of images used (CAD images). So, while the decision is unfortunate for Magmatic’s popular product, which the judgment freely admits was “original and clever”, might the outcome have been different if the RCD had used simpler, contrast-free, images to represent the design? This case should therefore be taken as a valuable lesson to any company wishing to protect the appearance of a product with a registered design that great care should be taken when deciding which drawings to file in case the design needs to be enforced later.
We are not aware that Magmatic brought any claim of passing off as well, and no doubt there were good reasons for that decision, but it’s interesting to consider, bearing in mind the extensive sales of Trunki cases – could they have made an argument that consumers recognise the get-up or appearance of their products to such an extent that they would be deceived on seeing the defendant’s products and assume they too came from Trunki? Any evidence of actual confusion in the market place would certainly have supported such a claim.
Whilst there are a number of legal issues surrounding this case, this judgment reinforces the need for careful consideration when deciding upon the drawings to use for registered design applications to make sure they have maximum fire power when needed.
Should you have any questions in relation to the matters discussed in this article or design rights, please contact our design team.