Absence of decoration can be feature of design, adding to overall impression – says Supreme Court

by Sahana Pal

The United Kingdom Supreme Court on Wednesday 9th March 2016, unanimously ruled in favour of “Kiddee Case” manufacturer PMS International, whose animal suitcase design was allegedly ripped off from another popular ride-on luggage for children, called “Trunki”, manufactured by Magmatic Limited.

Without denying the similarities between the two products, the five judge bench of the Supreme Court stressed on the fact that the overall impression they created on the mind of an informed customer, taking into account their shape and markings, was very different.

Magmatic’s founder, Robert Law, won a prize in 1998 for conceptualizing a design of a four-wheeled ride-on suitcase for children, called “Rodeo”. Subsequently he updated the design and proceeded to register it at the OHIM, who published it as a Community Registered Design (CRD). The commercial product “Trunki” was launched soon afterwards and was an instant hit. However, the monopoly did not last long as PMS International started producing their own line of ride-on suitcase “Kiddiee Case” with what seemed to be very minor changes in colour and style.

In February 2013, Magmatic issued proceedings seeking damages and injunction against PMS, and got a ruling in their favour from the High Court. [1] In June 2014, the decision was overturned by the Court of Appeals, who was of the opinion that the trial judge erred in restricting his evaluation by taking into account just the shape of the two cases and did not pay attention to the other distinguishing surface decoration features like colour, strap, stripes, eyes, whiskers and covered wheels.[2]

Confirming the stance of the Court of Appeal, the Supreme Court President Lord Neuberger observed that

[T]he conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever; [..] Furthermore, it appears clear that Mr Beverley of PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design.[3]

He then went on to say that the any alleged infringement of a CRD has to be tested on the basis of whether the infringing item “produce[s] on the informed user a different overall impression” from the original design. The design claimed in this case [Trunki] was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product. Given the rest of the design elements were different in the Kiddiee Case, the Supreme Court saw no reason in believing the latter infringed the former.

The Court also took note of Magmatic’s contention that absence of ornamentation cannot be a feature of a Community Registered Design, accepting that it raises a valid point of EU law and commenting that “Minimalism can self-evidently be an important aspect of a design just as intensive decoration can be.”[4]

The judgment generated an array of mixed reaction – with PMS Managing Director Paul Beverly seeing this as a “victory of fair competition”[5] whereas Trunki founder Robert Law claiming his brand was “willfully ripped off.”[6] But one thing that appears likely is that the judgment has opened a flood-gate of “inspired products” at cheaper costs, along with some serious questions regarding the best way to protect a design, especially with regard to colour and surface decorations.

[1] Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181.

[2] Kiddee Case rides high as Court of Appeal overturns decision on Trunki design right, Ashurt LLP Technology & IP newsletter, June 2014, available at https://www.ashurst.com/publication-item.aspx?id_Content=10569

[3] Para 57 of the judgment

[4] Para 60 of the judgment

[5] Trunki trumped by Kiddee in design battle of the suitcases, The Guardian, 9 March 2016, http://www.theguardian.com/business/2016/mar/09/kiddee-trumps-trunki-in-battle-of-the-suitcases

[6] Seller of Trunki children’s suitcases LOSES a Supreme Court fight with rival Kiddee Cases in a ruling called ‘disastrous’ for brands trying stop products being ‘copied’, Daily Mail UK, 9 March 2016 http://www.dailymail.co.uk/news/article-3483880/Seller-Trunki-children-s-suitcases-LOSES-High-Court-fight-rival-Kiddee-Cases-ruling-called-disastrous-brands-trying-stop-products-copied.html

Sahana Pal

Assistant Editor, QMJIP