Cooley (UK) LLP

Trunki v Kiddee: a design case

Question

What does the Trunki decision mean for EC regulations governing community registered designs?

Answer

The recent Trunki case concerned the alleged infringement of a community registered design (CRD) and what should be considered when assessing the overall impression of a design. A key issue considered by the Supreme Court was the extent to which surface decoration should be taken into account when comparing the overall impression of the designs in question.

Background

Magmatic Ltd (Magmatic), the maker of Trunki ride-on suitcases, was granted a CRD in 2003 in respect of its design. The CRD consisted of six images, which were prepared by 3D computer assisted design (CAD). The images showed a case with horns, wheels, a strap, and strips on the front and back. The horns were the same shade as the body, but the wheels, strap and strips were a darker shade.

The scope of protection conferred by CRDs is governed by the Council of the European Union’s Council Regulation (EC) No 6/2002 (the Regulation). Article 10(1) of the Regulation states that the scope of the protection includes “any design which does not produce on the informed user a different overall impression”.

High Court

In 2013 Magmatic issued proceedings in the High Court against PMS International Group Plc (PMS), which was selling a product called the ‘Kiddee Case’, which featured surface decoration intended to make the case resemble an insect or animal. Magmatic alleged that the Kiddee Case did not “produce on the informed user a different overall impression” from its own CRD. As such, Magmatic held that it should be entitled to protection under Article 10(1) of the Regulation.

Magmatic won at first instance. Based on a comparison of the shape of the Trunki and the Kiddee Case, Justice Arnold ruled that the Kiddee Case did not produce a different overall impression from the CRD. He stated: “The overall impression the Kiddee Case creates shares the slimmer, sculpted, sophisticated, modern appearance, prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the CRD”. On that basis, PMS was infringing Magmatic’s CRD. In making his decision, Arnold held that the proper comparison was between the shape of the CRD and the Kiddee Case, and he therefore did not consider the surface decoration of the Kiddee Case.

Court of Appeal

PMS appealed the decision, arguing that the High Court had wrongly assessed the overall impression. The appeal was allowed and the Court of Appeal overturned the first instance decision. First, Lord Justice Kitchin held that Arnold had been wrong to ignore the surface decoration of the Kiddee Case, and observed that the CRD did not depict surface decoration, which meant that the case, considered as a whole, looked like a horned animal. Second, he highlighted the colour contrast between the body and the wheels, strap and strips in the CRD. This contrast was not present in the Kiddee Case. Looking at the Kiddee Case, Kitchin held that, on a global comparison, it conveyed a different overall impression to that of the CRD.

The Supreme Court

Magmatic appealed to the Supreme Court. The Supreme Court dismissed the appeal and held that the Court of Appeal was right to overturn the decision at first instance.

The Supreme Court considered Kitchin’s criticism of Arnold’s judgment. Regarding the impression created by the shape of the CRD as against the Kiddee Case, the Supreme Court held that Kitchin was correct in his finding that the overall impression of the CRD was that of a horned animal, agreeing that this had been overlooked at first instance. As to the absence of surface decoration on the CRD, the Supreme Court held that it was a point which reinforced the overall impression created by the CRD and that the High Court had failed to consider this. Although the Supreme Court played down the role of surface decoration in comparing the overall impressions of the designs in this instance, the implication of the Supreme Court decision is that surface decoration may be considered an influencing factor in an infringement decision.

Finally, in respect of the contrasting colours in the CRD, the Supreme Court held that Kitchin was correct to find that the CRD claimed not just a shape, but a shape with contrasting colours. This feature differed from the Kiddee Case.

The Supreme Court held that since the Court of Appeal had considered the question of infringement on the correct legal basis, there was no basis for interfering with the Court of Appeal’s decision that the Kiddee Case did create a different overall impression to – and therefore did not infringe – the CRD.

Concluding remarks

The case highlights the need for extreme care when creating images that will be submitted for a CRD. Great thought should be given to any part of an image which may limit the scope of protection, such as the contrasting colours in this case. Given that it is fairly commonplace for CRD applicants to submit CAD images or photographs, which are more likely to limit the protection conferred by a CRD, the Supreme Court decision may lead to a change in registration practice for some designers.

Nihara McCormack is a trainee solicitor at Cooley (UK) LLP.

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