‘Trunki’ vs ‘Kiddee’ – a tale of horns, ears and antennae
On 9 March 2016 the UK’s Supreme Court gave judgment in the long-running dispute between Magmatic Limited (“Magmatic”), the makers of the children’s ride-on suitcase known as a ‘Trunki’, and, PMS International Group Plc (“PMS”) the manufacturers of a rival product, the ‘Kiddee’. The judgment is a significant one, and is expected to have wider long-term implications in the sphere of intellectual property rights, specifically, protection of intellectual property rights afforded to designers in the UK, and particularly those who have sought to protect their designs through registration of a Community Registered Design (“CRD”) – governed by Council Regulation (EC) No 6/202 (“Regulation”), and implemented under Commission Regulation (EC) No 2245/2002 - under the auspices of the European Design Registry.
A full version of the judgment in PMS International Group Plc -v- Magmatic Limited [2016] UKSC 12 is available via the Supreme Court’s webpage but for the purposes of this brief article, the salient points are as follows:
1. In late 2003 Magmatic obtained a CRD in respect of their design of a ride-on suitcase for children which is known under the trade mark ‘Trunki’ and whose shape follows that of the six three-dimensional CAD (grey scale) images depicting the product which were lodged as part of the CRD application. Over the years the ‘Trunki’ expanded into a series of different models (with differing colouring and some including ornamentation), for which Magmatic applied for (and obtained) CRDs in 2010.
2. In early 2013 Magmatic issued proceedings seeking damages and injunctive relief against PMS alleging infringement of Magmatic’s CRD through the sale of PMS’ ‘Kiddee’ four-wheeler case. Magmatic succeeded in the High Court at first instance, but PMS successfully appealed to the Court of Appeal, hence Magmatic’s further reference to the Supreme Court seeking to overturn the Court of Appeal’s decision.
3. Lord Neuberger (who delivered the Supreme Court’s judgment) noted that the ‘Kiddee’ suitcase had a number of features similar to the ‘Trunki’, for instance, the ‘animal-look’, four wheels on each corner, a clasp at the front, and a saddle-top which a child can sit on. However, he also noted some differences to the CDR comprised in the ‘Trunki’ design, such as the ‘Kiddee’s bright colouring, placement of the eyes and ornamentation, an un-sculptured ridge, and covered wheels. There were also certain elements which were described as cutting “both ways in terms of similarity with the CRD”, for instance, the presence of antennae or ears on the ‘Kiddee’ as opposed to the ‘Trunki’’s horns.
4. As regards the CRD itself, the Regulation stipulates that designs will be protected “to the extent that [they are] new and [have] individual character”, and “design” is taken to mean “the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”. The Regulation further explains that a design will have individual character “if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.”
5. Under settled English case law, 3 key aspects are scrutinised in cases related to registered designs (1) the registered design, (2) the accused object, and (3) the prior art – in each case, with a close eye on what they actually look like. The central issue in this instance was whether the ‘Kiddee’ produced on “the informed user” a “different overall impression” from the ‘Trunki’ CRD.
6. After a careful and detailed analysis of the CRD in question, the Supreme Court sided with the Court of Appeal on this issue, upholding the ruling that the ‘Kiddee’ did not infringe the ‘Trunki’ design, the ‘Kiddee’ having been considered to indeed produce a different “overall impression”. Although Lord Neuberger expressed “some regret” in reaching that conclusion, noting also that PMS themselves conceived the idea of creating the ‘Kiddee’ after seeing a ‘Trunki’, the judgment was one which dealt with the question of design, namely how to interpret particular images on a specific CRD, rather than “an idea or an invention”.
Those pursuing the CRD route in protecting their designs will need to consider very carefully precisely what aspects – and level of detail – of their design they wish to monopolise and with that in mind, the election of the images to be included in the registration application is of critical importance as it will be those images (note that a maximum of seven views are permitted) which determine, to quote Lord Neuberger, “the nature and extent of the monopoly” which is being claimed.
As already mentioned, the judgment is expected to be a significant one but it will take time to see quite how far reaching its implications will be. It has already been discussed in the Wysocki household, notable as being the first case that has piqued the interest of my 6-year old, Oscar, a ‘Trunki’ owner and - he would say (though the Court would disagree) - an “informed user”. He reached a view diametrically different to that of the Supreme Court… how about that?
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