Design ambiguity and a suitcase in point

Rob Law and his ride-on children’s suitcase, the Trunki, were rejected on BBC’s Dragon’s Den in 2006. Panellist Peter Jones claimed the design could be replicated in seven days. Law’s company, Magmatic, proved the panel wrong after seeing a turnover of £7m in 2013... until now.

Jones’ prophecy has come to fruition after the Trunki inventor lost a pivotal design infringement case in the Court of Appeal. Hong Kong-based PMS International (PMS), creators of Trunki-rival, the Kiddee Case, repealed a 2013 ruling that stated the company had breached Law’s design rights.

The court found that PMS had not infringed on Trunki’s community registered design (CRD) because “the overall impression created by the two designs is very different”. This latest decision, if upheld, would allow the lower-priced Kiddee Case to be sold in the EU.

The initial High Court ruling deemed that the two products were very similar in appearance and that PMS had infringed on Magmatic’s CRD, its UK unregistered design rights for the design of Trunki and its copyright associated with the packaging for Trunki. The Court of Appeal was asked to reconsider the scope of the CRD and whether the correct verdict had been given.

In 2013, the colour and surface details presented on the CRD were not considered, as they were not exhibited on the computer-aided designs submitted. However, the latest decision held this to be fundamental to the infringement case. The Trunki computer-aided designs lacked the detail required to sufficiently protect the design from copy-cat products and the Kiddee Case was judged to be sufficiently different in the impression it created to
the consumer.

This decision has rightly caused uproar in the creative industry, as it implies that design registrations for shapes do not provide adequate protection and that others are able to bypass such rights by adding surface decoration. The addition of stripes, whiskers and eyes has transformed the Trunki design into what is now being sold as a Kiddee Case.

Law has said it is “impossible to register the infinite amount of all surface decorations applied to one shape”. With approximately 65 per cent of all CRD’s presented in a similar fashion, through computer-aided designs, the repercussion of such a case could severely impact the profitability of UK designers and inventors.

"It brings into question the protection granted by the European Design Registry, and leaves the door open for more discount copycat products flooding the market. Law and a host of celebrity supporters are urging the Supreme Court to re-examine the decision."

Stuart Whitwell is joint managing director at Intangible Buisness