After initial success for Magmatic when
the High Court upheld infringement of
its registered and unregistered design
rights, PMS appealed on the matter of
infringement of the registered design rights
only. The Court of Appeal reversed the High
Court’s decision and a subsequent appeal
to the Supreme Court again found in favour
of PMS.
It is fair to say that prior to Trunki the
concept of a children’s ride-on suitcase was
not widely known, and certainly no product
meeting this description was available to
consumers (although kids have of course
been sitting on wheeled suitcases for
years!), and this brings us to the thorny
question of “what is the scope of protection
of a Community registered design (CRD) in
the European Union?”.
According to the statute a CRD provides
protection for any aspect of the appearance
of the whole or a part of a product resulting
from its lines, contours, colour, shape or
texture or the materials of which it is made.
Importantly, however, it does not protect
a concept, and its scope is defined by
what the owner has chosen to show in the
representations of the design.
Magmatic’s CRD is based on a set of
greyscale images (an example of which is
shown to the right) from different angles
of a computer aided design (CAD) model
of the Trunki product. It has no colour
and is devoid of surface ornamentation,
presumably in an attempt to provide
protection for all the various different
models of the Trunki.
When assessing infringement of a CRD it
is necessary to decide whether the alleged
infringing product creates a different
overall impression on the informed user
than does the CRD. Whilst the Kiddee Case
and Magmatic’s CRD are similar in many
respects, the Court of Appeal identified
two key differences. In the words of the
judge, “the impression created by the CRD
is that of a horned animal” and “the distinct
contrasts in colour between the wheels and
the strap, on the one hand, and the rest
of the suitcase, on the other, were striking
features of the design”.
By contrast the Kiddee Case (shown to
the right) has “stripes on its flanks and the
whiskers on either side of its nose” which
“immediately convey to the informed user
that this is a tiger with ears. It is plainly not
a horned animal”. Also, the wheels of the
Kiddee Case are almost completely covered
and the strap is the same colour as the
body.
Trunki loses
Supreme
Court battle
A now familiar site in airports around the world, the Trunki ride-on children’s
suitcase has been a huge success story for Magmatic and its founder
Rob Law. As is so often the case, however, with success came imitation.
The Kiddee Case was launched by PMS International and “specifically
designed to compete on price and quality against Trunki products.” In an
attempt to halt PMS in its tracks, Magmatic asserted its design rights, both
registered and unregistered, against PMS.
Designs
Magmatic CRD
PMS Kiddee Case
12
IP review
autumn
2016
