Trunki - an open and shut case of design infringement?

What does it take to create a different overall impression in design cases, and could the Court of Appeal's decision see the Trunki case go all the way to the Supreme Court?

Original news

Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181, [2014] All ER (D) 12 (Mar)

Magmetic Ltd (Magmatic) sold ride-on suitcases shaped like a horned animal under the trade mark 'Trunki' and a Community registered design (CRD). PMS International Ltd (PMS) imported and sold the 'Kiddee Case', designed like a tiger, leopard, cow, pig, ladybird and bee. The judge found that PMS had infringed the CRD and it appealed (see our blog post on the decision here). The Court of Appeal, Civil Division, in allowing the appeal, decided that the judge had erred in eliminating the decoration on the Kiddee Case from his consideration and had failed to consider the colour contrast between the wheels and the body of the CRD, absent in the Kiddee Case.

What is the background to this appeal?

In the High Court hearing, June 2013, the judge ruled in Magmatic's favour, finding that its Community Registered Design (CRD) for the Trunki had been infringed by the Kiddee Case. Arguably the judge left the door open for an appeal by commenting he was 'rather more doubtful' in coming to the conclusion that the overall impression created by the Kiddee Case was the same as the CRD yet the overall impression created by the Rodeo (an early version of the Trunki) was different. Despite his doubts, he concluded that the Kiddee Case did infringe.

Notably, and perhaps controversially, the High Court decided that since the CRD was for the shape of the Trunki case, only the shape of the Kiddee Case should be compared and other aspects such as surface decoration and use of colour contrast should be ignored. PMS argued that this approach was flawed and appealed.

What did the Court of Appeal conclude?

The Court of Appeal reversed the High Court decision finding that there were enough differences between the CRD and the Kiddee Case to create a different overall impression. In reaching its decision, the Court of Appeal decided that the High Court made two errors in its application of the law to the facts as discussed below.

               
Is it a bird, a plane...?

A horned animal and the role of surface decoration

A global assessment of the CRD and the Kiddee Case required the court to consider the overall visual impression of each design.

The CRD representations were not simple line drawings but were three dimensional images showing the suitcase from different angles. The suitcase represented in the CRD looked like a horned animal with a nose and a tail and 'it does so both because of its shape and because its flanks and front are not adored with any other imagery which counteracts or interferes with the impression the shape creates'. Conversely, the decoration of the Kiddee Case (second and third line of images in the annex) significantly affected how its shape strikes the eye, and therefore the nature of the overall impression. The Court of Appeal found that the High Court judge was wrong to exclude surface decoration in his comparison between the two designs because it was a crucial part of the global assessment (citing Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] IP & T 15 where the absence of any adornment on the iPad was a relevant factor in comparing it with Samsung's adorned tablet).

In the Court of Appeal's assessment, an essential element of the Trunki design was that it conveyed a horned animal. However, when taking into account the surface decoration of the Kiddee Case (tiger stripes and lady bird spots), it was clear that it did not convey a horned animal. In declining to consider surface decoration, the High Court failed to carry out a global comparison.

Colour contrast

The CRD was in monochrome so, following the reasoning in Procter & Gamble Co v Reckitt Beckiser (UK) Ltd [2007] EWCA Civ 936 [2008] IP & T 704, the High Court was correct to conclude that the CRD was not limited to particular colours. However, the Court of Appeal decided the High Court had overlooked the issue of colour contrast. The CRD representations show a contrast in colour between the wheels and strap (shaded) and the rest of the case (light) which the Court of Appeal held to be striking features in the CRD. These features were not replicated in the Kiddee Case which used the same overall colour. The High Court failed to take this into account when carrying out its assessment.

Does this ruling give a green light to the creation of look-alike products?

While it may seem unfair that the law appears to protect what was designed to be a look-alike product, this ruling does not represent a more lenient approach to would-be infringers. Any product that creates the same overall impression in the informed user will be infringing design rights. Each case will turn on its own facts and, in this particular case, The Court of Appeal found that the designers of the Kiddee Case had designed a product that was sufficiently different to the Trunki.

What will happen next?

Magmatic has announced that it intends to appeal to the Supreme Court which may encompass a reference to the Court of Justice of the European Union (CJEU).

What can lawyers and their clients take away from this judgment?

This case provides useful guidance on the scope of registered design protection. As the court emphasised, the scope of a registered design will be determined from representations in the registration—it is therefore essential to take expert advice when considering design protection. A design representation that very general (eg a simple line drawing) will generally offer the broadest protection but runs the risk of being invalidated by prior art. On the other hand, a design that is too specific may not stand up against similar designs.

This judgment also confirms that it is preferable to file a design in black and white unless of course a colour is essential to the individual character of the design.

We hope this isn't the last word of kids' luggage and horned animals.

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

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