Nov 5, 2015

Trunki v Kiddee Case – A 'case' for an appeal made to the Supreme Court

The design dispute between Magmatic Limited ("Magmatic"), the maker of children's Trunki suitcases and PMS International Group Plc ("PMS"), the maker of the Kiddee Case, has now reached the highest court in England.

Background

Magmatic created the Trunki ride on suitcase for children in 1997, and despite being turned down by investors on Dragon's Den in 2007, they have sold over 2 million ride on suitcases.   PMS sell a less expensive ride on suitcase for children named the Kiddee Case.

The Trunki Community Registered Design ("CRD") registration consists of six monochrome representations of a suitcase. The representations are computer generated three dimensional images which show the suitcase from different perspectives.

High Court

Magmatic claimed that the Kiddee Case infringed its registered design rights and won the initial case in the High Court in July 2013. Arnold J concluded that the Kiddee Case design infringed the Trunki design.

Court of Appeal

PMS appealed the High Court decision. Lady Justice Black and Lord Justice Moses agreed with Lord Kitchin that both at a general and a detailed level the Kiddee Case conveys a very different overall impression.

In his judgment Kitchin LJ cited the previous cases of Proctor and Gamble Co v Reckitt Benckiser (UK) (2007) and Samsung Electronics (UK) Ltd v Apple Inc (2012) in the ruling. He noted that the suitcase looks like a horned animal not only because of its shape but also because its surfaces are not adorned with any imagery which interferes with the impression the shape creates.

The Trunki design was filed in monochrome and therefore the design was not limited to a particular colour. The judge held that the Trunki is a horned animal whereas the Kiddee Case is an insect with antennae as follows:

"The impression created by the CRD is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression."

The decision of the Court of Appeal means that CAD drawings no longer offer the same protection as line drawings and third parties can defeat an infringement claim by claiming differences in surface decoration.

Appeal to the Supreme Court

Subsequent to the Court of Appeal decision Trunki appealed the decision. On 3 November 2015 the appeal made by Trunki was heard in the Supreme Court.

A ruling from 5 sitting Supreme Court Judges is expected within the next few weeks and it is possible that the case will be referred to the ECJ for guidance. We will keep you posted.  A link to watch the appeal hearing can be found here.

If you have any questions on how this story might affect your business or on design or intellectual property rights generally the team of experts at McDaniel & Co. are here to help on 0191 281 4000 or legal@mcdanielslaw.com

Posted by: in: Case Law, Designs, News

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