In March 2016 a landmark ruling in the “Trunki” case was handed down. This case wasn’t related to medical devices, but it was an important outcome that sparked a lot of conversations for both designers and lawyers. It clarified the scope of protection afforded by UK and European Community registered designs.
In this case Magmatic – which sells the children’s ride-on cases decorated to look like animals or insects (Trunki’s) – accused PMS International of infringing its registered design with their cheaper and relatively similar Kiddee Case.
Kiddee Case and Trunki shown together | Source: BBC
Originally the High Court agreed with Magmatic but this was overruled by the Court of Appeal and finally upheld by the Supreme Court. The Supreme Court nevertheless expressed sympathy for Magmatic recognising that Trunki was “both original and clever…however this appeal is not concerned with an idea or an invention, but with a design”.
Magmatic’s registered design featured a two-tone black and grey shading. Consequently the registered design was protecting both the shape and the design of the surface. The court said design law was based on the “overall impression created by a design” which for Magmatic was “an animal with horns”. The Court followed up stating it was “significantly different from the impression made by the Kiddee Case, which was either an insect with antennae or an animal with ears”.
Could Magmatic have avoided this scenario?
Yes, possibly. Some consider that the Trunki design should have been registered as line drawings rather than CAD drawings to give it more protection. Yet others state that had the registered design just shown the shape of the suitcase without any grey shading, it would then have been treated as protecting the shape irrespective of any surface decoration. However, it is not certain if this result could have been avoided, for the Courts have made the statement that there must be fair competition.
This decision will potentially have huge implications for designers and the design industry, with many disappointed by the result questioning the strength of design protection. Future creative entrepreneurs will fear similar competition from “me-too” products.
The lesson from this case is simply no matter how good you believe your idea or design to be, unless you seek specialist legal advice it may not be properly protected and your work could be exploited without recourse. It is worth seeking good professional legal advice.
Image source: Albright IP
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