We reported on this case in November 2015 (see "When is a Trunki not a Trunki? When it's a Kidee case of course") after the Court of Appeal disagreed with the High Court and ruled that Trunki's registered designs were not infringed by PMS's lookalike ride on suitcase, the Kiddee case.
Yesterday (9 March) five Supreme Court justices, the Supreme Court being the highest in the land, somewhat apologetically, unanimously agreed with the Court of Appeal and ruled in favour of PMS.
Design Registration Drawings
The Trunki designs for their ride-on children's suitcases were registered with Computer Aided Design (CAD) drawings. This type of drawing has been used to protect over a third of all EU design registrations. The CAD drawings were three dimensional images which included colour shading and showed the effect of light on the surface of the designs.
Court of Appeal Decision
The Court of Appeal (CA) held that the judge in the High Court had erred in principle and had failed to take into account the overall impression created by the registered designs. According to the CA, Trunki's designs gave the overall impression of an animal with horns whereas the Kiddee Case is an insect with antennae or an animal with ears.
The CA also held that the High Court judge had not taken into account the effect of the lack of surface decoration to the registered designs which reinforced the overall impression created by the designs to be that of a horned animal.
Finally, the CA held that the Trunki designs were not a simple shape and that the High Court judge had ignored the colour contrast between the body of the suitcase and the wheels. The CA held that the contrast in colours should be taken into account when assessing the overall impression.
Supreme Court Decision
The decision of the Supreme Court to agree with the CA ends a three year battle as unfortunately, a request to appeal the decision to the Court of Justice of the European Union has been rejected. The decision states the conception of the Trunki was original and clever and that it was clear that 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. However, while it was "with some regret" that the decision went against Trunki, the appeal was not concerned with an idea or invention, but with the design. The full decision can be viewed here https://www.supremecourt.uk/cases/uksc-2014-0147.html.
Significance for Designers
The way a registered design is interpreted will now change and some designers will have much narrower protection than they had previously thought they had. A competitor of a registered design owner could potentially avoid infringement by manufacturing competing products in different colours or with different features.
In future designers will need to take great care when filing design applications to keep the drawings as simple as possible because any details could restrict the scope of the designs. The broadest protection can be achieved by line drawings with no colours or light and shade contrast. A black and white drawing covers all colours, whereas a coloured drawing claims the colours shown.
Since registered designs are a relatively cheap form of protection, designers should also consider filing applications for both simple line drawings and CAD drawings.
If you have any questions in connection with filing design applications, please contact McDaniel & Co. on 0191 281 4000 or email@example.com: Case Law, Designs, News