The Trunki is renowned in the retail world due to its huge success in the market having failed to secure investment from the Dragon's Den investors. Magmatic Ltd ("Magmatic") registered a community design for the children's ride-on suitcase and subsequently brought a claim for, inter alia, infringement of its community registered design ("CRD") against PMS International Ltd ("PMS"), an importer and seller of the Kiddee Case which was designed as a budget alternative to the Trunki.
It was held at first instance that the CRD was only for the shape of the suitcase and, as such, all other aspects of the design of the Kiddee Case should be ignored. This resulted in the decision that the overall impression produced by the Kiddee Case on the informed user was the same as that produced by the CRD.
PMS appealed on the basis that the Judge had not properly interpreted the CRD and that he had wrongly excluded from his consideration the decoration on the Kiddee Case.
It was held that:
- The CRD looked like a horned animal with a nose and tail. Such an appearance was generated by its shape and that overall impression was not altered by any surface imagery.
- The Judge had erred in not appreciating that the CRD was for a suitcase which looked like a horned animal when considered as a whole.
- Given that the CRD images were monochrome, the design was not limited to particular colours (Procter & Gamble Co v Reckitt Benckiser (UK) Ltd  EWHC 3154 (Ch)). However, notwithstanding this, it was held that the Judge had also erred in not taking into account the distinct colour contrast between the wheels and strap of the case and the body of the case itself in the CRD. This was deemed to be a striking feature of the CRD but not present in the design of the Kiddee Case.
- The surface design was relevant and that the surface design of the Kiddee Case “significantly affects how the shape itself strikes the eye”.
- Designs should be assessed globally, including consideration of the way in which the products are used. In this instance, on a global assessment, the CRD was clearly intended to create the impression of a horned animal, whereas the impression created by the rounder and softer shape of the Kiddee Case, including the stripes/spots and two tone colouring of the Kiddee Case bodies, created a different overall impression from that produced by the CRD.
- In summary, the overall impression produced by the Trunki and the Kiddee Case were very different when taking into account their respective shapes and markings.
Points to note
- The CRD was a computer generated 3D image which showed greyscale contrasts that were deemed by the Court to be a striking feature of the design. If the design had been a simple line-drawing, without greyscale contrasts, the outcome may have differed.
- The decision may be subject to further appeal in light of the possible conflict with the Procter & Gamble case.
- PMS’s Kiddee Case was intended to be a discounted version of Magmatic’s Trunki, and, notwithstanding this, differences such as markings and rounder edges were deemed enough to constitute a different overall impression. As a result, claimants should consider whether to seek to rely on unregistered design rights instead of registered designs as the shape and configuration of products will only be assessed and surface ornamentation is expressly excluded from consideration.
- However, registered designs are still an effective deterrent to potential copycats and should always be carefully considered before deciding to rely on unregistered design rights alone.