Designs - Trunki case closes and sends Kiddee case packing

[caption id="attachment_1111" align="aligncenter" width="300"]attachretrieve (3) Got some junk in your Trunki?[/caption]

What was the case about?

Magmatic sells a well-known children’s suitcase known as ‘Trunki‘, famously turned down by the investors in Dragons Den after Peter Jones claimed it could be copied in seven days. PMS designed a similar range of children’s luggage known as ‘Kiddee Case’ which was admittedly inspired by the Trunki.

From left to right in the graphic above: (1) Registered Community Design image for the Trunki (2) a Trunki (3) a Kiddee Case

Magmatic alleged PMS had infringed its:

  • Community Registered Design (CRD)
  • design rights (unregistered)
  • copyright in the artwork for the packaging, and
  • copyright in the safety notice

What did the court say about prior disclosure of the ‘Rodeo’ design when considering validity of the CRD?

The Trunki had an animal-based luggage forerunner, called the ‘Rodeo’, which was designed by the owner of Magmatic while he was at university. The Rodeo won a prize in a student competition, the Institute of Materials Design Award 1998.

PMS alleged the design award ceremony constituted disclosure of the Rodeo design which therefore should form part of the relevant design corpus when considering the novelty and individual character of the CRD under Council Reg (EC) 6/2000, arts 4, 5 and 6 (the Regulation). Magmatic sought to rely on the ‘obscure disclosures’ exception under art 7(1) of the Regulation (the other exception is for confidential disclosures). The court held, however, the exception did not apply—Magmatic could not prove the design of the Rodeo could not reasonably have become known in the normal course of business to those specialising in suitcases.

The court ruled, however, because the Rodeo was relatively obscure, it did not form part of the designs corpus of which the informed user would be aware. The design corpus was therefore restricted to adult clamshell suitcases.

How did the court approach the question of design freedom?

PMS alleged the designer of the CRD had relatively little design freedom and the design was only a modest departure from the earlier design for the Rodeo. The court found, however, the CRD represented a substantial departure from the design corpus, in terms of case shape, handles, straps and so on. The designer of the CRD had in fact considerable design freedom (as demonstrated by variations in the design of the Rodeo, the various designs for the Trunki, and designs produced for PMS and third party designs).

It follows the CRD was entitled to a broad scope of protection. This would make it harder for PMS to avoid a finding of infringement.

The court concluded, despite the various differences between the Trunki and Kiddee Case, the overall impression is one of similarity. The comparison with Magmatic’s earlier design, the Rodeo, found the overall impression was different—the Rodeo was squatter, chunkier and less sophisticated than the sleeker and more modern designs of the Kiddee Case and Trunki which shared a prominent ridge and horn like handles and clasps to look like the nose and tail of animal.

How should lawyers advise their clients in light of this judgment?

This case provides helpful summaries of the law relating to prior disclosure and the obscure disclosure exception.

  • The essential question in design cases is how the similarities and differences, taken together, would affect the informed user’s overall impression.
  • Are the similar features, for example a handle design, more visually striking than the differences in, for example, wheel design? It often will not be enough, as demonstrated by PMS, to highlight all the differences between two products to avoid a finding of infringement.
  • Interestingly, the key witness for PMS could not exclude the possibility that the design draftsman had access to a copy of the Trunki design in question. When clients commission designs they should remain involved in the design process to minimise the possibility of copying and design infringement.

For full version of news analysis on this case, (LexisPSL®IP  & IT subscribers), please see:

Design infringement – Trunki case closed

Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat), [2013] All ER (D) 164 (Jul)

Jessica Stretch, solicitor in the Lexis®PSL IP&IT team

Relevant Articles
Area of Interest