The UK Supreme Court has dismissed the appeal by Magmatic Limited, the UK manufacturer of the ride-on suitcases for children known as the Trunki (see first image below), in its case of infringement against the design of Hong Kong rival, Kiddee (see second image below).
Although it was found that the Kiddee design emanated from the original and clever nature of the Trunki Community Registered Design (CRD), the UK Supreme Court reiterated that the case was not about protecting ideas or innovation, but instead about proper scope of protection of a design. The Supreme Court decided that the Court of Appeal was correct in overturning the finding of the trial judge where it had been held that the Kiddee design infringed on the Trunki CRD.
The Court reiterated how the effect of the lack of ornamentation on the surface of the Trunki CRD reinforced the horned animal impression that it gave and how this differed to the presence of the decoration on the body of the Kiddee case. The Court also found that the Court of Appeal was right to conclude that the colour contrast in the Trunki CRD, which included grey horns and black wheels, spoke, strap and strip, meant that the CRD claimed not merely a specific shape, but a shape in two contrasting colours.
The case serves to remind us of the narrow scope of protection granted by CRDs. We should not, however, dismiss the value of CRDs on this basis. CRDs are particularly useful and valuable for protecting new products (they are cheap and can be registered quickly). What this case does highlight is the importance of carefully selecting appropriate images for an application for a CRD as they will determine the proper scope of protection of the registration. Designers must be careful in ensuring that the design is neither too general nor too specific in order to enforce the registered rights of the design against potential infringers.
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Contributed by: Brian McElligott
