How best to protect a design? Clarifications following the “Trunki” decision

47“Trunki” versus “Kiddee” case

In a decision dated March 9, 2016, the UK Supreme Court issued its decision on the alleged infringement of a Registered Community Design for the “Trunki” suitcase. The decision was highly anticipated as it sheds light on the criteria to be taken into consideration by the judges when assessing the counterfeiting of computer-generated design drawings. This decision will influence the advice given to designers who in future register their designs.

The dispute involves two British companies who manufacture children’s suitcases. The suitcases are different from traditional suitcases and are rather original as they look like animals, which allows children to ride them and as if they were strollers/scooters?. Magmatic, which manufactures the “Trunki” suitcases was competing with PMS International who proposes similar suitcase models called “Kiddee case”, but at a discounted price.

The High Court judge had considered that the RCD of the “Kiddee case” suitcase was a counterfeit version of the “Trunki” suitcase. The Court of Appeal reversed this decision on the basis that the judge has failed to interpret the overall impression of the RCD properly. He did not take into account the lack of ornamentation on the surface of the RCD as well as the colour contrast between the body of the suitcase and the wheels.

The Court of Appeal’s position was supported by the Supreme Court which considered that the “Kiddee case” suitcase was not an infringement of the RCD of Magmatic. At first, the solution may seem surprising but the Court did not fail to recall that the judgment did not aim at protecting ideas but to determine the scope of protection of an RCD. The judge conceded that it was clear that the creation of the “Kiddee case” suitcase was inspired by the “Trunki” suitcase model. PMS International had clearly expressed its desire to create an alternative model but at a discounted price.

Obviously dissatisfied with the decision of the Supreme Court, the founder of Trunki has launched a #ProtectYourDesign campaign on Twitter to protest against the decision but also to fight for enhanced protection for designers.

This decision gives an important insight into key notions used to determine the counterfeiting of an RCD. Through obiter dictum, the UK Supreme Court has clarified the situation concerning computer-generated designs which, as we now know, benefit from a lesser scope of protection compared to RCDs represented by line drawings.

Magmatic is the holder of an RCD constituting 6 designs. The latter has been generated by computers: computer-aided design (CAD).

Overall visual impression, lack of ornamentation on the surface and colour contrast.

To determine whether a design or model is imitating another, the judges consider the overall visual impression. In the “Trunki” case, the overall visual impression is that of a horned animal while the “Kiddee” suitcase is reminiscent of an insect with antennae or animal with ears. It was held that the horns constituted an important element of the RCD given that they modified the overall visual impression of the animal.

The judges also held that the lack of ornamentation on the surface reinforced the horned animal impression made by Magmatic’s RCD. Simplicity or minimalism can explicitly constitute an aspect of a design.

This was decided in one of the numerous judgments opposing Samsung, against Apple, concerning the designs of their smartphones and tablets.

The 2013 judgment, Samsung Electronics Ltd v Apple Inc, focused on the registration of a design of the iPad, known for its minimalistic design and for which consequently, the lack of ornamentation was an important feature of the design. When a RCD created by CAD does not include ornamentation, it should be interpreted as a feature of the design. As a matter of fact, this type of technology can easily show details such as surface ornamentation of an object. Therefore, its absence should be interpreted as being deliberate.

This also means that it is easier for counterfeiters to copy the designs without being sanctioned. It is sufficient to use drawings with relatively refined designs and to add some ornamentation to register a similar design without it being considered to be a copy.

With regard to colours, this RCD was represented by shades of grey. The wheels, the strap and central rubber seal are a different shade of grey than the rest of the suitcase. At first instance, the judge considered that the RCD only covered the shape and thus, a contrast in shades of grey was not taken into consideration. The CRD did not claim the protection of a specific shape but of an object with different colours.

These clarifications brought by the UK Supreme Court give an opportunity to outline some practical advice in order to benefit from an enhanced protection of your designs:

  • The Trunki decision clearly indicates that creating line drawings affords better protection than computer-aided designs (CAD).
  • Several registrations are also preferable since the protection will be more extensive.
  • While assessing whether there has been an infringement, the comparison between two designs is not done when the object is in use. Therefore, if it is a complex product comprising of many parts which allow it to be disassembled and reassembled:
  • the visible parts must be apparent on the design when the product is being normally used by the consumer;
  • however, the non-visible/spare parts should not appear on the design.
  • Moreover, be careful not to ruin the novelty factor! If the designer discloses the design, the novelty factor is destroyed and therefore so is the individual character of the design. However, there exists a concession period of 12 months following the disclosure where one can apply for registration of the design.
  • Furthermore, to avoid any subsequent dispute, it should be ensured that the applicant is also entitled to the copyright over the design.

Finally, before any step is taken, it is necessary to ensure that the design has not already been registered by someone else.

Dreyfus can advise and assist you with the protection of your designs.