Trunki's claim over Kiddee Case design fails to appeal to Supreme Court

The UK Supreme Court today handed down its first decision on design rights, in the Trunki case (PMS International (Respondent) v Magmatic (Appellant) [2016] UKSC 12). The Supreme Court upheld the decision of the Court of Appeal to the effect that there was no infringement of the Community registered design for Magamatic's Trunki suitcase by PMS's "Kiddee" suitcase, which copied the idea but not the design as registered.

Business Impact

• The Supreme Court re-iterated that design right protects designs, not ideas.  The fact that the Trunki was both original and clever was not relevant in this case, although the Supreme Court reached this conclusion with some regret.
   
• Surface decoration can be taken into account in assessing the overall impression on an informed user as it should form part of the 'global comparision' test, even where the registered design does not have surface decoration. 
   
• Designers should consider carefully the level of generality used when filing designs – if it is too general, a design may be invalidated by prior art and if it is too specific, there will be no protection against even very similar designs. This is a careful balancing act. 
   
• The scope of protection offered by design rights will be construed narrowly and proving design right infringement in the UK remains difficult. 

The judgment is to be welcomed as it provides clarity on a difficult area of design law, although further restricts the protection provided to the holder of a registered design, as have earlier Court of Appeal cases such as the Febreze case (Proctor & Gamble v Reckitt Benckiser (2007)) and the dispute between Apple and Samsung over registered design and their tablet shapes (2012) and in Dyson v Vax (2011). It will now be even more difficult for registered design owners to assert infringement of their rights in the UK. Even where the registered design does not have surface decoration, the surface decoration on the allegedly infringing item may give rise to a different overall impression.

The UK Intellectual Property Office (IPO) encourages people to use registered designs in the UK and recently held a consultation proposing to reduce the filing fees for registered designs in the UK.  The IPO is proposing to allow applicants to include up to ten designs for a single application fee of £70. This represents a big reduction as the equivalent under the current system costs £420.

Whilst these reduced application costs should attract more users to seek protection of products through design right, the fact remains that it will be difficult to successfully assert design right infringement in the UK courts. Any advantage associated with the proposed reduction in filing fees may well be outweighed by the known difficulties in enforcing these rights, which have been further compounded by today's decision.  

Background
 
The Claimant, Magmatic makes the well-known ride along children's suitcases, which are sold under the "Trunki" trade mark.  The Claimant has a Community Registered Design ("CRD") to protect the shape of the Trunki with six monochrome representations of the exterior of the case, two of which are reproduced below in the top row. The Claimant's CRD does not show any surface decoration.  The Defendant launched a competing range of suitcases called the 'Kiddee Case', which includes suitcases shaped to look like animals and insects, as shown below on the bottom row. 

The High Court

The Claimant sued the Defendant for registered design infringement of its CRD and for copyright infringement in respect of the artwork for its packaging. Arnold J. found that the correspondences between the two artworks were insufficient to amount to a reproduction of a substantial part of the Trunki artwork, although the Defendant was found to have infringed the Claimant's copyright in the Trunk safety notice. 

A registered design will be infringed if another design does not produce a different overall impression on the informed user. At first instance, Arnold J. found that designs did create the same overall impression, so the CRD was infringed. Arnold J. said the CRD was evidently for the shape of the suitcase. The scope of protection is determined by the graphical representation of the design and the information that it conveyed and the judge followed Jacob LJ's comments in the Febreze case, where Jacob LJ said that the proper comparison is the shape, graphics on the articles being irrelevant. 

The Court of Appeal

The Defendant appealed in respect of High Court's judgment on design right infringement. In allowing the Defendant's appeal, the Court of Appeal overturned the decision of Arnold J., saying that the overall impression between the Claimant's registered design and the Defendant's product is not the same so there is no infringement. Surface decoration can be relevant in context, if it might alter the overall impression. The Court of Appeal found that Arnold J. had not considered the CRD ‘globally’ and did not have regard to the fact that the CRD was clearly intended to create the impression of a horned animal because of its shape. Significantly, eliminating the surface decoration from consideration was wrong as it affected how the shape itself struck the eye and therefore, the overall impression that it gave.   
 
The Court of Appeal also highlighted the importance of colour in its assessment of the overall impression created on users. The colour contrast between the wheels and the body of the CRD was a striking feature which was not present in the Defendant's designs. The Claimant's CRD consisted of monochrome computer generated images and the Court of Appeal found that the colour contrasts were part of the CRD and there should be taken into account in considering the overall impression.  In this case, the colour was an important factor in the Court of Appeal's finding that the Defendant's design produced a different overall impression on the informed user.  On a practical level, designers may well be better served in filing line drawings when filing design applications, where contrast in colour tones are not reflected to try and avoid this issue in infringement cases.
 
The Court of Appeal's decision generated quite a lot of controversy and a lot of negative publicity.  The Claimant managed to galvanise design industry support for its appeal to the Supreme Court, using #ProtectYourDesign on Twitter.  Magmatic claimed that the Court of Appeal's ruling undermined the rights of more than 350,000 creative British businesses with designers left vulnerable to flagrant design infringement in the UK.

Judgment of the Supreme Court

The Supreme Court found that the Court of Appeal was right to hold that the judge had materially misdirected himself and could therefore properly consider the question of infringement for themselves. Since the Court of Appeal had approached the question of infringement on the correct basis of law, the Supreme Court should be very slow to interfere with their conclusion that the Kiddee did not infringe the CRD.

The Court rejected the argument that the question of whether the absence of ornamentation in a CRD could, as a matter of law, be a feature of design and if so that it was in the case of this CRD and that this question should be referred to the CJEU, despite the support from the Comptroller General of Patents, Designs and Trademarks for such a reference.  However, on an obiter basis, the Supreme Court decided the point of principle that absence of ornamentation can be a feature of a CRD.

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