Friday, 11 March 2016

Supreme Court Ruling in Trunki 'v' Kiddee:- a case packed with implications for design right protection

Two years on from the Court of Appeal decision in the so called ‘Trunki’ case, the parties have a final decision from the Supreme Court.  It was decided on the 9th March 2016, with the Court confirming design rights are not concerned with the protection of an idea, but of the design (and the scope of review is narrow). 

The dispute itself relates to the popular children’s sit-on wheelie suitcases. 

Magmatic, the owner of the ‘Trunki’ children’s case (as seen on Dragon’s Den) had a Community Registered Design for their case which they accused PMS International ("PMS"), makers of the ‘Kiddee Case’, of infringing. A registered design protects a product’s appearance and the factors which contribute to it; among other factors, shapes, forms, lines, colours and textural qualities. 

In a case that started with the High Court stating that the Magmatic Trunki design was infringed by PMS’s Kiddee Case, the decision was then reversed by the Court of Appeal, who felt it was not infringing. The reason for the non-infringement in the view of the Appeal Court related significantly to two tone colouring. Magmatic’s registered design was deemed to be not just for the shape of the case, but incorporated the contrasting colouring also. The Court of Appeal was of the view that this had to be taken into account when comparing both products and concluded that there was no infringement by PMS. Magmatic appealed the non-infringement decision to the Supreme Court.

In a long trundling case that had legal spectators wondering "are we were nearly there yet?", the Supreme Court decided that the Court of Appeal was right in its approach, and although sympathetic to Magmatic given the originality of the design, ultimately decided that the Kiddee Case did not infringe, as the protected design was not just for the shape, but to be viewed more narrowly, taking into account the colouring and design.

Magmatic will certainly be disappointed after falling victim to the balance that is required to be struck between protection for designers and fair competition. They will not, though, be packing their Trunki for a trip to the European Court of Justice, with the Supreme Court deciding not to refer any matters for guidance. 

The full legal ramifications of the case remain to be seen, not least because PMS previously made clear their intention to pursue a claim for damages against Magmatic following an earlier obtained injunction.  

For anyone concerned with design rights, this decision highlights the need to ensure that any variations of your design, and not just the core elements, are protected; think carefully about how you present your design when filing for protection; and look to obtain the widest penumbra of protection possible. 

For more guidance on design rights, get in touch with Brymer Legal.

A link to the judgment can be found here -