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Case Closed: Trunki Sent Packing by the Supreme Court

PMS International Group Plc (Respondent) v Magmatic Limited (Appellant) [2016] UKSC 12

On Wednesday 9 March 2016, the Supreme Court delivered its final judgment in the Community design dispute concerning Trunki’s ride-on suitcase.  The ruling provides important guidance on the role of surface decoration on the “overall impression” of a design and the effect of colour contrast in monochrome design representations.

The ‘Trunki’ case was featured on BBC’s ‘Dragon’s Den’, where it failed to secure funding, but subsequently became a commercial success.  Magmatic Ltd owns a Registered Community Design (RCD) for the appearance of the Trunki case and in 2013 launched proceedings against PMS International Limited, who were producing the ‘Kiddee Case’ as a lower-cost alternative.

Magmatic’s High Court claim succeeded, with Arnold J finding that its RCD was infringed by the Kiddee Case.  PMS appealed the decision and in 2014 the Court of Appeal overturned the High Court decision, stating that Arnold J had wrongly interpreted the Trunki RCD, only taking into account the shape and ignoring other aspects, including surface design.

Yesterday, the Supreme Court delivered its judgement, dismissing Magmatic’s appeal and agreeing with the decision of the Court of Appeal that the Kiddee Case did not infringe the Trunki RCD.

Magmatic’s Trunki RCD consists of six monochrome CAD (Computer-Aided Design) images.  Since the Trunki design images are monochrome, the scope of the design was not held to be limited to articles of a specific colour.  However, the CAD images showed a distinct contrast between the black wheels and the uniform grey of the greater part of the body of the suitcase.  It was held that the choice to show these components in contrasting colours in the design images meant one would naturally infer that the wheels were intended to be in contrasting colours.  As a result, it was held that the Community design “claimed not merely a specific shape, but a shape in two contrasting colours”.  The Kiddee Case did not share the same contrasting colours.

Throughout the judgment, the Supreme Court placed a strong emphasis on considering the overall impression of the RCD and warned against comparing in detail the similarities and differences between the RCD and the Kiddee Case.  The Supreme Court agreed with the Court of Appeal that the overall impression given by the Trunki RCD is that of a horned animal, which differs substantially from the overall impression made by the Kiddee Case products, which were considered to be either insects with antennae or animals with ears.

In their earlier decision, the Court of Appeal had determined that the lack of ornamentation on the surface of the Trunki RCD reinforced the horned animal impression made by the RCD.  Lord Neuberger, giving the judgment for the Supreme Court, accepted that this point had some force and commented that “the absence of decoration can, as a matter of principle, be a feature of a registered design”.  This approves a line of earlier cases in Community design courts, including the decision in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) which contrasted the extreme simplicity of the Apple iPad design compared to that of the Samsung Galaxy tablet.

Magmatic had also contended that whether the absence of ornamentation can as a matter of law be considered a feature of design should be referred to the Court of Justice of the European Union for a definitive ruling.  However, the Supreme Court declined to make a reference to the CJEU, commenting that it “would be extraordinary if absence of ornamentation could not be a feature of a design” and firmly deciding that this point was not open to argument.

This Supreme Court judgment offers crucial guidance to applicants for Community designs.  Importantly, the judgment highlights that it is the content of the design images which “exclusively identify the nature and extent of the monopoly which he [the applicant] is claiming” and not the appearance of the product to which the RCD relates.  Lord Neuberger went on to note that while photographs or CAD images are appropriate for showing surface decoration, line drawings tend to be the most appropriate way to show a physical shape and achieve the broadest claims.

It is vital that applicants determine at the outset what combination of the shape, colour, texture, materials and ornamentation of the product is to be protected so that appropriate design drawings – of the appropriate type – can be prepared on the advice of a design attorney.  Had Magmatic chosen in the present case to represent the Trunki design with line drawings rather than shaded CAD images so as to protect only the shape of their design, their action against PMS may well have prevailed.

If you have any questions about Community designs and how you might best protect your products, please contact Paul Roberts.