16 May 2016
As we previously reported, the high profile ‘Trunki’ Registered Design dispute finally came to an end as the UK Supreme Court upheld the UK Court of Appeal’s judgement that PMS International’s ‘Kiddee Case’ product does not infringe Magmatic’s European Community Registered Design for the Trunki.
Now that the dust has settled, we are pleased to provide some practical guidance for designers and businesses wishing to protect their designs in the light of this decision.
Brief review of the key points of the decision
In the decision, the Supreme Court confirmed that the tonal contrasts between the darker wheels (and strap) and the lighter body in Magmatic’s Registered Design (see images directly below) could not be ignored as an immaterial features of the design. The Registered Design could therefore only be interpreted to cover: both the shape of the suitcase and its two-tone nature (and not merely its shape, as contended at first instance and later criticised).
Above: Exemplary representations from Magmatic’s European Registered Design for the Trunki. Note the visible tonal contrast between the wheels and the body.
Above: PMS International’s alleged infringing article – the ‘Kiddee Case’. Note the mostly covered wheels.
The Supreme Court also reinforced the Court of Appeal’s criticism that there was a failure at the High Court “to give proper weight to the overall impression of the [Registered Design] 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 mainstream media has been largely sympathetic to Magmatic, with the broad consensus being that this decision is a heavy blow for British designers as the Supreme Court has failed to protect designers.
However, for many practitioners, the Supreme Court’s decision comes as little surprise and it is instead a welcome confirmation of what many had suspected. The decision emphasised the importance – and almost sole importance – of representations within a Registered Design, and the thoughtfulness that should be put into the preparation of suitable representations, rather than merely using whatever happens to be to hand.
In determining the representations to be used, there is a fine balance to be struck between validity and the scope of protection. The Supreme Court offered guidance in this respect: “an applicant is entitled to make any number of applications. More broadly, it is for an applicant to make clear what is included and what is excluded in a Registered Design, and he has wide freedom as to the means he uses.”
As a result, for robust protection, multiple Registered Designs can – and should – be used to cascade protection (akin to patent claims), with tone, colour, shape, highlighting, and disclaiming used in various combinations to protect actual embodiments and – separately – key design features also. This approach should provide thorough protection for the look and feel of a design at a comparatively low cost compared to other forms of IP protection.
With all of this in mind, one cannot help wonder whether Magmatic would have succeeded in their action against PMS had they also filed line drawing representations and/or CAD drawings in a single tone.
To this end, far from failing designers, European Registered Designs still offer the advantages of:
Registered Designs are therefore as effective as ever, and we would certainly contend, fit-for-purpose, but –crucially – only when they are used properly – which, as this decision emphasises, is all about getting your drawings right.
For advice on how Registered Designs can be used to protect your designs or for further commentary regarding this judgement, please do not hesitate to get in touch.
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