Blog Registered Designs. Trunki v. Kiddee Case 28 February 2014
The Court of Appeal overturned a High Court decision of infringement by ruling that the Community Design Right for Magmatic Ltd’s Trunki, a ride-on suitcase for children, was not infringed by competitor PMS International’s Kiddee Case. The Kiddee Case is also a ride-on suitcase for children and is available in various animal type designs. It was common knowledge that the Kiddee Case design was somewhat based on that of the Trunki design.
PMS International’s Kiddee Case Magmatic’s Trunki
At first instance the Judge found that the Kiddee Case was an infringement of Magmatic’s Trunki Community design right and that the UK unregistered design right in specific parts of the Trunki case was also held to be infringed. Despite this, the Court of Appeal held that the High Court had made two mistakes. Firstly, that the Judge had failed to adequately carry out global comparisons between the Registered Design and the alleged infringement. The Court of Appeal held that the overall impression created by the two designs was different in that the impression created by the Trunki design was that of “a horned animal” and was a “sleek and stylised design” whereas the design of the Kiddee Case was “softer and more rounded and evocative of an insect with antennae or an animal with floppy ears” which was “plainly not a horned animal.”
Secondly, the Judge failed to correctly identify the design aspects which were protected by Magmatic’s Trunki registration. The Court of Appeal said that the first instance judge was incorrect in only basing his assessment on the Kiddee Case’s shape while ignoring aspects such as the graphical surface design. They noting in particular that: the profile of the Kiddee Case was asymmetric and more rounded; it did not have semi-circular shaped cut-aways on the sides of the case; and the wheels of the Kiddee Case were covered by wheel arches in the same colour as the body. The Trunki’s wheels, although colour was unspecified, are a different colour from that of the main body of the case. Magmatic had filed six three-dimensional computer generated images illustrating the case from various perspectives and the effect of light upon its surfaces. The Court held that despite colour not being registered and thus a point of distinction between the cases when assessing infringement contrast was evident in the registration.
The appeal judge concluded “At both a general and a detailed level the Kiddee Case conveys a very different impression” therefore there had been no infringement of the registered design. The Director of Magmatic and Designer of the Trunki, said “This decision is problematic on many levels. In theory it means design registration for a shape can be overcome simply by adding surface decoration – like a print, pattern or marking.” Designers should therefore take caution from this case and consider carefully what representations of the design should be filed.
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