A (suit)case of mistaken identity?

Last week saw the Supreme Court hand down its long awaited judgment in the dispute between Magmatic (the makers of popular children's suitcases "Trunki") and PMS International Group, who import and sell a similarly wheeled and patterned "ride on" case for children known as "Kiddee Case" which is pitched at a significantly lower price point. Trunki had famously risen to prominence as one of the great "missed opportunities" of Dragons' Den where it did not receive an offer of investment but went on to become a huge commercial success, and a hit with children for its distinctive shape and appealing "animal print" type patterns.

Magmatic have a Registered Community Design ("RCD") for the overall shape of Trunki. Their registration is on the basis of a monochrome shaded CAD drawing of the (undecorated) Trunki case, with elements such as the wheels, strap and a central strip picked out in different colours.

Of course, the Trunki "as sold" relies for part of its appeal on its eye-catching animal designs such as zebra or, as illustrated here, ladybird patterns.

The Kiddee Case range uses a similar set of surface designs but, as may be seen below, the actual shape and configuration of the product is different in a number of material respects from the Trunki.

At first instance, Mr Justice Arnold sitting in the Intellectual Property & Enterprise Court made a finding of infringement of Magmatic's RCD. However, this finding was overturned on appeal.

In making his finding of infringement, Arnold J had found that the scope of the RCD's protection was for the shape of the Trunki with or without surface decoration, and disregarding the colour highlighting of certain components of the Trunki visible in the drawing, so that any surface decoration or components picked out in colour on the allegedly infringing products should be disregarded, the Court only needing to consider whether the shape was sufficiently similar to justify the finding of infringement. He added to this by noting that the Trunki was such a significant departure from what had previously existed in that field of design, that the breadth of its protection should be fairly broad - in other words the hurdle to overcome in order to be "infringingly similar" was set relatively low.

The test for infringement of an RCD is whether or not the allegedly infringing product or design creates a "different overall impression" upon the informed observer when compared to the subject matter of the RCD.

Lord Justice Kitchin in the Court of Appeal, overturning the earlier judgment, held that Arnold J had erred in a number of ways, which last week's Supreme Court ruling described as follows;

1. that Arnold J had failed to give proper weight to the overall impression of the RCD as an animal with horns
2. that the judge failed to take into account the effect of the lack of ornamentation on the surface of the RCD; and
3. that the judge ignored the colour contrast between the body and the wheels.

The Supreme Court (Lord Neuberger delivering the judgment) agreed with all of these criticisms of the First Instance judgment, and crucially spent some significant part of its judgment analysing the effect of the lack of surface decoration in the RCD and the highlighting of certain parts of the design in a different colour. The court, although stopping short of making a definitive ruling on the question of whether an absence of surface decoration should form a positive part of an RCD, appeared to support Kitchin LJ's view that it would not be appropriate to disregard the effect of the decoration on the accused design entirely, when comparing it to the subject matter of the RCD "because it significantly affects how the shape itself strikes the eye, and the overall impression it gives".

The Supreme Court effectively construed the RCD as protecting the shape of Trunki in a single colour with certain elements (wheels, strap etc) picked out in a second colour, and found that the overall appearance of Kiddee Cases "as sold" was sufficiently removed from that to avoid infringement of the RCD.

Accordingly, Kiddee Case was found not to infringe the RCD for Trunki in a decision which has important implications for design-led businesses.

Chief amongst these implications must now be the conclusion that unless a positive lack of ornamentation is a feature of the design, it will be highly risky to illustrate an RCD application with a plain monochrome CAD drawing such as this, particularly if it is envisaged that the product "as sold" may rely for part of its appeal upon eye catching surface designs.

In addition, where CAD drawings are used, care should be taken about the use of contrasting shades to highlight different components of the design, different materials used etc, as it appears that the Supreme Court has suggested a very literal interpretation of the drawings or images used to illustrate a design in order to determine the scope of its protection.

Some commentators have suggested that designers should instead illustrate designs by simple line-drawings or, if aspects of surface decoration may be important, by including a series of photographs of the protected products as they are intended to be sold, including any surface decoration. It would always be advisable to seek professional advice before proceeding to apply to register a design which may be the "family silver" of your business.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.