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‘Trunki’ design rights ruling paves way for more copycats, claims City lawyer

Design rights are for the protection of designs, not ideas, says Lord Neuberger

9 March 2016

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The Supreme Court has unanimously dismissed an appeal from the manufacturer of the 'Trunki', the popular children's ride-on cases, for an infringement of its registered design rights.

With the UK's top court rarely considering cases involving design rights, the outcome of Magmatic Ltd v PMS International Ltd had been hotly anticipated by intellectual property (IP) lawyers, designers, and businesses seeking to manufacture products inspired by iconic designs.

Since 2004, Magmatic has manufactured and sold ride-on suitcases for children under the trade mark 'Trunki' whose shape is similar to the design shown on a community registered design (CRD) from 2003.

In 2013, Magmatic issued proceedings against PMS International Limited, alleging the Basildon-based company were importing and selling ride-on 'Kiddee Case' suitcases that infringed its design.

At first instance, Lord Justice Arnold found that the Kiddee Case infringed Magmatic's CRD. The Court of Appeal allowed PMS's appeal, resulting in a subsequent appeal by Magmatic to the Supreme Court.

Although the Supreme Court's president said he had sympathy with the appeallant, as the Trunki was a 'clever idea', he reminded the company's founder, Rob Law, that 'this appeal is not concerned with an idea or an invention, but with a design'.

Giving the only judgment, Lord Neuberger recognised that the discount case was 'very similar indeed' to Trunki's product, but nevertheless dismissed Magmatic's appeal on the basis that the overall impression created was sufficiently different.

Following the ruling, Law tweeted that he was 'devastated' adding added he was 'bewildered by this judgment, not just for ourselves but for the huge wave of uncertainty it brings to designers in Britain'.

'The law is meant to be about certainty,' he continued. 'But this decision will create chaos and confusion among Britain's design community.'

Jeremy Drew, head of retail at RPC, suggested the ruling would send 'shockwaves' through design-driven businesses.

'It's highly likely that other businesses may now begin to see cheaper versions of their well-known original registered designs coming onto the market,' he said.

'With design increasingly at the heart of many of the UK's most successful manufacturing businesses this is going to be a very poorly received judgment.

'The fact that Kiddee Case said that it intended to create a cheaper version of the Trunki case - and yet still managed to achieve a Supreme Court ruling allowing it to continue mimicking their registered designs - will make registered designs much harder to enforce in future.'

Drew explained there would also be concern that computer aided design drawings would no longer offer the same protection as line drawings.

'With a significant number of all community registered designs submitted last year not presented as line drawings, this leaves the majority of designs less protected,' he commented.

'Businesses looking to imitate the success of recognizable market-leading brands by imitating or drawing heavily on their original iconic registered designs are going to find this much easier from now on.'

This will be particularly unwelcome news for those SMEs whose businesses rely on safeguarding their IP and who often have limited budgets for enforcing perceived infringements through the courts.

The number of designs registered by businesses grew by nearly 7 per cent in 2014, rising to over 4,900 registered designs from 4,600 in 2013 according to data from the UK's Intellectual Property Office (UKIPO).

'With the number of designs being registered increasing, original designers will need to look carefully at the robustness of their legal protections to safeguard themselves against copycats,' added Drew.

The RPC partner explained that attempts by companies to ensure watertight protections against IP infringement would become more challenging than ever after the Supreme Court's ruling.

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Company, Consumer, and Contract Intellectual property Courts & Judiciary