Where did it all go wrong for the Trunki?
The “Trunki” suitcase is a highly successful product. Failing to attract investment on Dragon’s Den does not appear to have proved a major setback for makers Magmatic, who estimate that 20% of all three to six year olds in the UK own one of their famous ride-on suitcases.
As with many success stories, others have tried to jump on the bandwagon. The “Kiddee Case”, made by PMS International, is billed as a budget alternative to the Trunki. The Kiddee Case is also a ride-on case for children, available in various different animal-based versions. Needless to say, Magmatic are not too happy with the competing product. They took PMS to Court, alleging infringement of the Registered Community Design (RCD) for the Trunki.
In July 2013, the High Court found that the Kiddee case did indeed infringe Magmatic’s RCD, but the Court of Appeal have recently overturned this result, pointing to errors in the High Court Judge’s original finding.
So what did the Court of Appeal do differently?
According to the Court of Appeal, the High Court made two mistakes.
Firstly, the High Court Judge failed to carry out a global comparison between the Registered Design and the alleged infringement. According to the Court of Appeal, the overall impression of the Registered Design included the fact that the case created the impression of a “horned animal”. The alleged infringing products, in contrast, created the impression of a “tiger with ears”, which in the words of the Appeal Judge is “plainly not a horned animal”.
Secondly, the High Court Judge failed to correctly identify the design aspects which were protected by the registration. The Design was registered with six computer-generated renders, one of which is reproduced here. As is common practice, the registered images were in grayscale, and Magmatic argued that this meant that the design was only to the shape of the case, and did not include any decoration on the surface.
The Court of Appeal disagreed. The Appeal Judge pointed out that the representations on file were “not simple line drawings”. Instead, Magmatic had filed “computer generated three dimensional images which show the suitcase from different perspectives and angles and show the effect of light upon its surfaces.” Whilst colour was not registered, and therefore could not be a point of distinction when assessing infringement, contrast was evident in the registration. In particular, the wheels and the strap are a different (but unspecified) colour from the rest of the case. This left PMS free to point to the lack of contrast in their product as a point of distinction.
Can this decision really be right?
Not surprisingly, Magmatic are not very impressed with the Court of Appeal’s decision. Rob Law, Director of Magmatic and Designer of the Trunki, said “This decision is problematic on many levels. In theory it means design registration for a shape can be overcome simply by adding surface decoration – like a print, pattern or marking.” Meanwhile, a rather gloomy anonymous comment on the IPKat blog reads “Kind of shows how useless registered designs can be.” So, has the Court of Appeal made a blunder and, if this decision is good law, are registered designs really worth it?
The case is certainly a difficult one, and I have to say that at first I was sceptical. Having studied the case though, my view is that the Court of Appeal was probably correct, though the result might seem brutal for Magmatic.
I will start by saying that the Court of Appeal’s second point is almost certainly correct. Where a design is registered as a 3D CAD render, showing colour contrast between different parts, the contrast must be taken into account as part of the design. If the holder of the design wants to ensure that only the shape is protected, then line drawings should be filed.
The Appeal Judge’s first point – that the overall impression of the registration is of a horned animal, which is not infringed by something that looks like a tiger – is more problematic. A large part of the reason why the alleged infringing product looks like a tiger is because “the stripes on its flanks and the whiskers on either side of its nose immediately convey to the informed user that this is a tiger with ears.” In other words, the alleged infringement looks like a tiger mainly because of surface decoration which is present on the alleged infringement but not on the registered design. This certainly seems harsh, and I can easily understand Mr. Law’s frustration. In the end though, once it is accepted that the registration includes the surface decoration (though not the specific colours), the finding of non-infringement inevitably follows. Again, a registered design filed using line drawings would have helped Magmatic to ensure that only the shape was included.
So are registered designs really still worth it?
Yes! But the Trunki decision shows just how important it is to consider carefully what representations should be filed. In my opinion, Magmatic’s fortunes would have been better had they filed line drawings to protect only the shape of the Trunki. Indeed, the High Court did find in favour of Magmatic on the basis of several unregistered designs, and this decision was not contested. This is an extremely strong indication that Magmatic could have had registered designs which would have been infringed. Sadly though, the design which they actually had was too narrow.
Is that the end of the story?
It remains to be seen whether Magmatic will try to identify grounds for appeal. In order to have the case heard by the Supreme Court, they will have to show that the case raises a point of law of general public importance.
Although I think the Court of Appeal were probably right for the reasons explained above, I cannot claim to be completely sure. One big source of doubt for me is the existence of the “Bernard the Bee” version of the Trunki. This version is very similar in shape to the Registered Design, but resembles a bee (which is not a “horned animal”). Does this version create a different overall impression as compared with the registration and, if not, can that be consistent with the decision on the Kiddee case?
Regardless of whether the Court of Appeal has had the final word on the Trunki, I would be surprised if the Courts do not have to address the issue of added ornamentation again in the next few years. Where a plain unadorned surface is shown in a registration, is there a point at which added ornamentation on an alleged infringement is merely “on top of” the same plain surface? It is possible to register a shape without surface decoration, and it is possible to register surface decoration without colour, but is it ever possible to register for example a solid plain red surface whilst leaving open the possibility of patterns being added over the top? Whether or not the present decision is correct, those questions remain broadly unanswered.