Trunki Forced To Pack It’s Bags
Magmatic have finally lost their design right battle against PMS International at the Supreme Court.
The decision, handed down by Lord Nuerenburg, confirmed the Court of Appeal view that the allegedly infringing “Kiddee” design created a “different overall impression on the informed user”.
Back to Basics: What is a registered design right
Design rights seek to protect the eye-appeal of a product. This could be the sleek design of the newest smart phone or the design of the latest Nike trainers.
A design can be registered at the UK Intellectual Property Office for UK wide protection, and at the OHIM for what is known as a Community Design Right (which covers all 28 countries of the EU).
There are certain conditions that you need to fulfil to be able to register a design, but provided that there is not much in your market that is very similar to your design, you could stand a good chance.
The Trunki Case
Let’s go back to the Magmatic v PMS International case now – better known as “Trunki” v “Kiddee”. Lord Neuberger of the Supreme Court himself said that the decision to deny protection to an “original and clever” product like the Trunki case was made with “some regret”.
It is a shame that the designer of such an innovative and creative product could not prevent a competitor from making a more affordable look-alike. However, the law is unemotional and while you are not expected to keep up to date with it, we as lawyers are.
A sticking point in the Trunki Supreme Court decision were the images used to register the designs. It was decided that the extent of the protection for the case was exclusively and precisely limited to the images that appear on the registry.
In this particular case the CAD images used in the filing were interpreted as not covering any surface decoration. This went against Magmatic when comparing the Kiddee case’s similarity to their registered design.
It was said by the Supreme Court that sometimes the less detail you put on a drawing for registration – just the contours of the design without surface colours or detail for example – the more protection you obtain. The fact that the Trunki design was a CAD image in two-tone colour, rather than being a line-drawing of the contours of the design, was fatal to the claimant.
So extreme care must be taken when submitting designs for registration and applicants should seek to get the widest protection they can obtain.
Why you might need professional advice
Early legal advice could prevent you from running up significant and needless legal bills in relation to your design rights in the future.
You might find out that your design does not fulfil the requirements and decide against spending money on an application that is doomed to fail. You will also probably come away with more of an idea of what you need to do to obtain a registration when creating future designs.
The vast majority of designs are filed without legal advice. For protection within the UK this can seem particularly attractive, as the registration fees at the UKIPO are remarkably low and there is no examination process.
However, a lack of due diligence and necessary expertise in the design registration process can cost you thousands further down the line. When disputes arise, you need to know that not only are your designs registered, but that they are registered in a way that gives you the widest protection possible.
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