Registered Community Designs – UK Supreme Court dismisses Trunki Appeal
The UK’s Supreme Court has dismissed an appeal made by the makers of the children's ride-on “Trunki” suitcase UKSC 2014/0147. The Supreme Court agreed with the Court of Appeal that the design of children's ride-on suitcases known as a "Kiddee Case” did not infringe the design of the Trunki. Although the Court had “sympathy” for the makers of the Trunki, as the idea of the Trunki case was a clever one, they emphasised that design right is intended to protect designs not “ideas”.
Magmatic make and sell the well-know "Trunki" children's ride-on suitcases. Magmatic are the holders of a registered Community design ("RCD") in respect of its design for the Trunki. The representations used in their RCD include “greyscale tonal gradations and some differences in tone between different parts of the product” but “no surface decoration”. In a previous judgment, it was also noted that one of the striking features of the RCD is that the handles and the clasps give the suitcase the appearance of a horned animal.
PMS International Limited (PMS) also market children's ride-on suitcases known as a "Kiddee Case". These are sold in two basic versions; an animal version with handles formed to look like ears and an insect version with handles formed to look like antennae. Each version comes in a number of varieties which have different graphical designs on its surfaces: tiger, leopard, cow, pig, ladybird and bee.
At first instance, in June 2013 ( EWHC 1925 (Pat)) PMS were found to infringe Magmatic’s RCD. However, on appeal ( EWCA Civ 181) in January 2014, it was judged that the overall impression created by the two designs was very different. “The impression created by the RCD is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.” For these reasons, it was considered that the design of the Kiddee Case did produce on the informed user a different overall impression from that produced by the RCD – thereby failing the test for infringement of a RCD.
A controversial point of the case, which formed the basis of the appeal, was that since the representations in the RCD did not show any graphical designs on the surface of the suitcase, the designs on the surface of the Kiddee Case had to be ignored. PMS disagreed and contended that they should be taken into account, which was one of the points of consideration for the Supreme Court.
The Supreme Court has upheld that the Court of Appeal was right to hold that the design claimed in this case was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product; there were no grounds for questioning that decision.
Interestingly, Lord Neuberger commented he reached the decision “with some regret”. It was not disputed that the Trunki seems to have been both original and clever; it was an innovative design and it “has won numerous awards and has been a significant commercial success” but this appeal was not concerned with an idea or an invention, but with a design. Even though PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and produced a discount model “ride on suitcase”, it did not infringe the Trunki design per se. There will be no referral to the CJEU.
Applicants of RCDs will need to consider the representations on their applications carefully in light of the point on surface decoration; absence of ornamentation can be considered to be a feature of a RCD; “minimalism can selfevidently be an important aspect of a design just as intensive decoration can be”.