The Trunki Case – overall impression is key!
Last month the Supreme Court handed down its judgment in one of the most talked about design right cases of recent years, namely the Trunki case, PMS International Limited v Magmatic Limited  UKSC 12. For those of you who missed the media frenzy last month commenting on the case, we thought we would provide you with a short recap of what happened, along with some practical tips relating to designs.
Background and history of proceedings
Magmatic are the owner and designer of the “Trunki” case, which is a popular ride-on suit case for kids (see picture 1 below for example). To ensure the Trunki case was suitably protected from an IP perspective, Magmatic had obtained a community registered design (CRD) for it. The CRD consisted of six 3D Computer Assisted Design (CAD) drawings of the case, in monochrome, with grey scale shading and distinct tonal contrasts (see picture 2 below for example).
The Trunki case was in itself a fresh idea and the product became an instant success when launched. As with all successful products it was not long before competitors sought to get in on the action and launch their own similar ride-on suit cases for kids. In particular, PMS launched its own version of the ride-on suit case, the “Kiddee Case” (see picture 3 below for example).
Picture 1 – Example “Trunki” case
Picture 2 – Example CAD drawing making up Magmatic’s CRD
Picture 3 – Example
Magmatic were not particularly impressed with PMS’s actions and so in February 2013, Magmatic issued proceedings seeking damages and an injunction against PMS alleging that PMS was importing into, and selling in, the United Kingdom and Germany a “Kiddee Case” which infringed the CRD. The court at first instance agreed, and were of the view that the Kiddee Case did infringe the CRD because it did not “produce on the informed user a different overall impression from the CRD” (the fundamental test when deciding infringement).
PMS successfully appealed to the Court of Appeal who decided that the judge at first instance had got it wrong. In particular, they raised three criticisms of the judge, namely:
- The judge failed to give proper weight to the overall impression of the CRD as an animal with horns, which was significantly different from the impression made by the Kiddee Case, which were either an insect with antennae or an animal with ears.
- The judge failed to take into account the effect of the lack of ornamentation on the surface of the CRD; and
- The judge ignored the colour contrast in the CRD between the body and the wheels.
Magmatic subsequently appealed to the Supreme Court. The key question before the Supreme Court was whether the criticisms raised of the judge were correct.
The Supreme Court
The Supreme Court reviewed each of the criticisms in turn, and in relation to criticism 1, agreed that the overall impression of the CRD was that of a horned animal and this was not given proper weight at first instance.
In relation to criticism 2, the Supreme Court interpreted this as essentially saying the absence of decoration on the CRD reinforces the horned animal impression made by the CRD. The Supreme Court felt this was not a stand-alone point but simply reinforced the first criticism, and whilst minor, was nevertheless important.
Magmatic thought a reference on this point to the CJEU should be made as they felt their input was needed on whether the absence of decoration, can in principle, be a feature of this particular design, but the reference was refused. Interestingly though, the Supreme Court did make a number of obiter comments in relation to this – Lord Neuberger expressed his view that it was plain to him that the absence of decoration can, as a matter of principle, be a feature of a registered design – “simplicity or minimalism can notoriously be an aspect of design, and it would be very curious if a design right registration system did not cater for it”.
In relation to criticism 3, the Supreme Court considered the Court of Appeal right to conclude that the CRD claimed was not merely a specific shape, but a shape in two contrasting colours. Lord Neuberger went onto say, “[o]nce one concludes that a registered design claims not just a three dimensional shape, but a three dimensional shape in two contrasting colours, one colour for the body and another colour (or possibly other colours) for specified components, then it seems to me that is must follow that, when one compares the allegedly infringing article with that design on a “like for like” basis, one must take into account the colouring of that article.” The Supreme court were of the view that the judge at first instance should have taken into account the fact that the wheels of the CRD were shown to have a different colour from the rest of the image (other than the strap and the strip).
The upshot of the Supreme Court’s analysis and the criticisms raised was that the design claimed was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with the remainder of the product. The Court of Appeal had correctly applied the law with regards infringement and therefore the Supreme Court could not question the conclusion reached by it i.e. that the Kiddee Case did not infringe the CRD. Magmatic therefore lost their appeal to the Supreme Court.
Comments and practical tips
The decision of the Supreme Court may well be seen by many designers as a harsh, and is compounded by the fact that the Supreme Court is the highest court in the land and so represents the last word on the matter. Even Lord Neuberger said that his conclusion that the Kiddee Case did not infringe the CRD was “reached with some regret, as the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever…unfortunately…this appeal is not concerned with an idea or an invention, but with a design.”
However, the Supreme Court decision did provide some interesting practical points including emphasising the fact that when applying for designs, one should take great care over the representations or drawings submitted as these are what form the crux of what is being claimed.
An applicant must make clear what is included and what is excluded in a registered design, and has a wide freedom as to the means he uses to do this e.g. whether a CAD drawing, a photo, or a line drawing is more appropriate. Which format is chosen will depend on the level of detail required and the scope of protection desired. The more detail provided the narrower the scope of protection. For example, a simple line drawing showing only the contours of the design provides wider protection than a photo, since a photo specifies not only the shape, but the surface structure and the material as well.
Where an applicant wishes to exclude features which are shown in the representation for explanatory purposes only, but do not form part of the claimed design, he may disclaim those auxiliary features by depicting them in broken lines (for drawings) or by means of colouring them (for black and white drawings or photos) or encircling them (for any drawing or photo).
The Supreme Court also made clear that the use of black and white or monochrome representations cover all colours.
 The Community Design: First Experience with Registrations  EIPR 383, 385