Written by Jim Dennis, Matthew Hiscox
Almost 13 years to the day since the Community Registered Design (CRD) came into effect in the EU, the UK’s Supreme Court has handed down its very first judgment on this relatively young IP right. It was certainly worth the wait and has already caused considerable controversy.
At the culmination of a widely-publicised case that has rumbled on for three years, the Supreme Court found in favour of luggage manufacturer PMS who had openly admitted imitating Magmatic’s well-known “Trunki” ride-on children’s suitcases.
The verdict represents a severe blow to Magmatic, the manufacturers of Trunki, and has sent shockwaves through the IP, design and retail communities.
Until this judgment, many designers and IP professionals had felt reassured in the belief that the test for infringement of CRD was so broad that anything that looked reasonably similar to a registered design would infringe it. The Supreme Court’s judgment has blown away such cosy notions.
The case was especially eye-catching because the High Court had originally ruled in favour of Magmatic, finding that PMS’s product infringed the Trunki design, which was later overturned by the Court of Appeal.
Magmatic had originally brought CRD infringement proceedings against PMS, claiming that the products sold by PMS infringed Magmatic’s CRD protection.
Magmatic based its argument on the following computer aided designs of Trunki which it had protected as CRDs:
PMS sold the following lower priced product called “Kiddee Case”:
At first instance, Mr Justice Arnold found that Trunki CRD protected the shape of the case, and that the Kiddee Case infringed the Trunki CRD because it created the same “overall impression” (the test set out in the CRD Directive of 2002).
The Court of Appeal, however, overturned the High Court ruling as it considered that Arnold J’s decision had not taken account of:
- the true overall impression of the design;
- the lack of ornamentation on the surface of the registered design; and
- the colour contrasts within the design.
The Supreme Court Justice, Lord Neuberger, agreed with Magmatic that their Trunki was both “original and clever” and that it appeared clear that the Kiddee Case had been conceived as a result of seeing the Trunki case within the marketplace. This was openly admitted by PMS.
That being said, design law is based on assessing the overall visual impression created by a design. Based on that understanding, there are numerous visual differences between the Trunki Case and the Kiddee Case and the Supreme Court ruled that, although the concept was similar, the overall visual impression was very different. Lord Neuberger held that the CRD relied upon was not simply a wheeled case with horns, but that it also featured a number of other elements, e.g. straps, stripes and wheel designs, which also needed to be factored into the overall assessment of the two designs. Crucially, Trunki could not rely on the shape of their product or the concept behind it.
Within the judgment, the Supreme Court was able to provide some further guidance on its analysis of design infringement cases. However, a key point largely left unanswered was whether the lack of surface ornamentation acted as a feature to the design. Although the Supreme Court did not directly assess this point, it did indirectly support the Court of Appeal’s view that it would be wrong to disregard the surface ornamentation as this feature builds into the overall impression of the design. Minimalism may be just as much a design feature as decoration.
It was noted that Magmatic’s CRD was registered in black and white and the Supreme Court advised that it would take into consideration potential colour contrasts when making an assessment on a design infringement case. It also stated the importance of protecting the key element(s) of designs with a view to strengthening businesses’ overall design protection.
Although the judgement is a blow to Trunki, it has set a clear precedent for companies pursuing design right protection and has put a real focus on design right protection and enforcement strategies. Over the past couple of years there has been a real focus from the Government on tackling design right infringement, but cases like this reinforce the importance of design law and the current limitations associated with the enforcement of design rights. In particular the following points stand out:
- Designers cannot rely on the concept of their product, but should consider if it is patentable;
- Designers cannot rely on the shape of their product if there are other features such as accessories and ornamentation involved: CRD is a visual right;
- Designers who want to protect a shape alone should consider submitting line drawings; and
- Designers should consider registering a broader range of designs around the central concept in order to deter imitators.
Jim Dennis is a partner and Matthew Hiscox a trade mark manager in the IP, Media & Technology team at Gordon Dadds LLP.
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I joined Gordon Dadds in 2016 having worked for over 17 years in the field of Intellectual Property (IP). My career started at the UK Intellectual Property Office (UK IPO) where I gained invaluable experience in all areas of IP, with a predominant focus on trade marks. Since then I have worked for national law firms offering a full spectrum of IP services. I specialise in advising on IP rights, both contentious and non contentious. The services I provide range from clearance of brands, filing and prosecution of trade marks and designs worldwide, policing of IP portfolios, advising on trade mark, domain name and company name enforcement matters, developing international brand strategies, tactical applications and portfolio management. I am also highly experienced in managing, sub managing and developing worldwide IP portfolios and work closely with clients to streamline and manage portfolios cost effectively.