As we await a ruling from the Supreme Court (the highest court in England and Wales) in the Magmatic (the maker of 'Trunki' suitcases) v Kiddee Case, a case on which we have previously reported, we will take a moment to consider some of the issues at stake and how they may impact on small creative businesses and the registration on designs.
Readers should be aware that Rob Law, founder of Magmatic, is running a #ProtectYourDesign campaign on Twitter which is backed by a number of high profile entrepreneurs, including Grand Designs presenter Kevin McCloud. You maybe interested to follow this by clicking here.
Briefly, the case will turn on whether the Kiddee Case creates a different overall impression on the informed user to the Registered Community Design of Magmatic, creators of the Trunki case – the Kiddee Case and Trunki can be seen side by side here. It is not often that a design law case reaches the Supreme Court and the case is likely to set a precedent in relation to and impact on the design world, whatever the findings of the Supreme Court Judges.
The Tunki design was protected as a Registered Community Design. The design document comprised of six representations from various angles, using Computer Aided Design ("CAD") drawings. Reportedly, CAD is used for registering around 30% of designs across the EU. Trunki's CAD drawings did not show any surface decoration and the Court of Appeal decision means third parties will be able to claim that differences in surface decorations should be taken into account. If this was the case, CAD drawings would no longer be offered the same protection as line drawings.
Colour and Greyscale in Design Drawings
The Trunki ride on suitcase was registered in greyscale, and in particular, the distinct contrasts between the wheels (light shade) and strap (darker shading) were acknowledged as "striking features" by the judges in the Court of Appeal.
The Court of Appeal had held that a design registered without the use of colour prevented a Claimant from relying on colour similarities between his design and an allegedly infringing design. The Court, however, also acknowledged that this did not prevent a Defendant from relying on a lack of contrast in greyscale as a basis for differences between designs. In contrast to the findings of the Court of Appeal, a recent decision by the Hague Court dismissed a Defendant's contentions that because its designs comprised distinctive colour the Claimant's colourless designs had been infringed (see Wibit-Sports v Aquaparx as reported on by Marques - look out for our report on this tomorrow).
The above two cases provide an example of the contrasting interpretation of European Law though it is expected that the Supreme Court ruling will provide some clarification on the above issues, indeed some clarification as to the extent of protection that is actually provided by Registered Community Designs.
Trunki is an ACID member. ACID (acid.com) is a membership organisation which protects the interests of Designers and creatives in the UK. The organisation is rewnowned for the rigorous enforcement of its members' intellectual property rights. People involved in creative businesses or those where they carry out some aspect of the design process should consider joining ACID for the benefits it is able to provide such as, for example, free initial legal advice and discounted rates on precedent documents that will provide IP protection.
If you require any advice on the issues raised in this article please do not hesitate to contact us on 0191 2814000 or email@example.com: Case Law, Designs, News