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            The case is closed: Trunki loses Supreme Court battle

            We discuss the recent Supreme Court decision in the design right dispute between Magmatic and PMS.

            Date: 14/03/2016

            After a three-year battle, the Supreme Court has dismissed UK company Magmatic's appeal against the Court of Appeal's finding that its registered Community design (RCD) was not infringed by Hong Kong rival PMS' Kiddee Case.


            In 2003, designer Robert Law updated an original design for a ride-on suitcase for children and registered the design as a Community design right. The registered design consisted of six images prepared by a 3D Computer Assisted Design (CAD) program, in monochrome, with grey-scale shading and distinct tonal contrasts. By 2011, Trunki estimates that approximately 20% of all 3-6 year olds in the UK owned its product and by 2014 the product was sold in over 95 countries.

            In 2013, Magmatic issued proceedings seeking damages and an injunction against PMS alleging that PMS was importing into, and selling in the UK and Germany, a product that infringed its RCD. In July 2013, the High Court (HC) found that the RCD had been infringed on the basis that the RCD and the Kiddee Case designs created the same overall impression. The Court of Appeal (CoA) overturned this decision in February 2014 and held that there was no infringement. In 2015, Magmatic appealed to the Supreme Court (SC) and on 9 March 2016 the SC handed down its judgment, unanimously upholding the CoA’s decision.

            The SupremeCourt's decision

            The SC agreed with the CoA’s three criticisms of the HC judgment, namely:

            • The HC failed to give proper weight to the overall impression of the RCD as an animal with horns, which was significantly different from the impression made by the PMS’ Kiddee Case, which, owing to the product's surface decoration, created a different overall impression of an insect with antennae or an animal with ears. The SC criticised the HC for failing to mention the horns when addressing the RCD’s overall impression and upheld that this was an important feature that the CoA had rightly addressed.

            • The HC failed to take into account the lack of ornamentation on the surface of the RCD as opposed to its presence on the Kiddee Case. The CoA stated that the RCD was unadorned and that this reinforced the overall impression it created of a horned animal, whereas the surface decoration of the Kiddee Case had colouring and spots, which influenced the overall impression it created of a ladybird with antennae and a tiger with ears. The SC agreed with the CoA that absence of surface decoration could be a feature of a registered design and that this was dependent on the interpretation of the representations used in the registration. The SC considered the case of Procter & Gamble v Reckitt Benckiser and stated that representations by way of line drawings were more likely to be interpreted as not excluding surface decoration than CAD. It then referred to the decision in Apple v Samsung that the lack of surface decoration was considered to be a feature of the design itself. The SC considered the question of whether a lack of surface decoration was a feature of the RCD in this case and stated that there were arguments for and against, but decided that it did not need to reach a conclusion either way as the CoA has not done so either.

            • The HC failed to consider the colour contrast in the RCD between the body, wheels and the straps. The SC stated that the contrasting colour in the RCD was a product of choice by the designer and it therefore agreed with the CoA that the HC was wrong to hold that the RCD protected the shape alone. The SC held that the presence of contrasting colours should be taken into account when assessing the overall impression of a RCD.

            The SC agreed with the CoA’s criticisms of the HC’s approach and confirmed that the CoA was entitled to reconsider the question of infringement and reach its own decision. The SC confirmed that the CoA’s approach was correct so Magmatic’s appeal was dismissed and the CoA’s decision that there was no infringement was upheld.

            Practical considerations for designers

            Paul Beverley, the managing director of PMS, has openly admitted that he came up with the idea for his product Kiddee Case as a result of seeing a Trunki and discovering that a discount model was not available. Despite this, but with considerable sympathy for Magmatic, the SC agreed with the CoA that the design of the Kiddee Case was too far removed from the RCD to constitute an infringement. So what does this judgment mean for designers?

            The cases emphasises the fact that design registrations only protect the specific aesthetic design of a product, not the concept. Designers can apply to register a patent if the concept of their product is new and inventive and this would prevent competitors copying the product, but arguably this is not always relevant or practical for small start-up designers.

            Designers should consider how best to represent their designs when filing a registration particularly as the enforcement of design registrations that have no ornamentation, will require an assessment of whether the overall impression created by the accused product is affected by decoration. There are various options available to designers such as line drawings, CAD and photographs and each option should be considered to decide which is most appropriate in the circumstances, particularly because design registrations cannot be amended, removed or replaced after filing.

            Author: Liz Cooper

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