Trunki on the case; CRD has a broad scope of protection
23 July 2013
In a High Court decision published 11 July, a Community Registered Design (CRD) owned by Magmatic for the design of the Trunki suitcase was found to be infringed by the PMS International Ltd “Kiddee Case”, a product said to be inspired by the Trunki.
The validity of Magmatic’s CRD was questioned in relation to the “Rodeo”, an earlier concept design by the designer of the Trunki, Rob Law. Interestingly, whilst Arnold J held that the disclosure of the prior Rodeo design was not excluded under the obscure designs exception, he concluded that the design was in fact obscure enough that it did not form part of the design corpus of which the informed user would be aware.
The Trunki was therefore taken to be the first product in its field i.e. the first “child’s ride-on suitcase”. As such, its designer was understood to have a considerable degree of freedom. The CRD for the Trunki was therefore found to be entitled to a broad scope of protection as compared to other designs in more crowded fields.
Differences between the Kiddee case and the CRD included an overall shape with more rounded contours, wheels substantially covered by side covers, and fabric handles. However, it was held that these differences were not enough to create a different overall impression on the informed user.
Arnold J stated that were it not for the Rodeo design, he would have little hesitation in saying that the Kiddee Case produced the same overall impression on the informed user taking into account the broad scope of protection of the CRD.
However, even when taking the Rodeo design into account he was of the opinion that, despite the differences between the Kiddee Case and the CRD, “the overall impression the Kiddee Case creates shares the slimmer, sculpted, sophisticated, modern appearance, prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the CRD but are absent from the Rodeo”.
The pictures of the Magmatic CRD are not in colour and do not include any graphical designs. Surface decoration features of the Kiddee Case were therefore ignored when considering differences between the Kiddee Case and the registered design.
The earlier Rodeo design had been the winner of the BASF/Institute of Materials Design Award 1998. There was some dispute over whether it would have been possible for anyone not present at the award ceremony to ascertain the design of the Rodeo prior to the CRD priority date of 20 June 2003. The decision therefore included guidance on the “obscure disclosures” exception set out in Article 7(1) of the Regulation (Council Regulation 6/2002/EC on Community Designs). This applies where the disclosure in question "could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community".
According to Arnold J, the burden of proving that an exception applies rests with the party relying on the exception. However, he accepted that the evidential onus may shift back to the other party once it is shown that the disclosure they rely upon is an obscure one. In this case it was held that the Rodeo design could reasonably have become known in the normal course of business to those specialising in suitcases within the Community as a result of the Award ceremony because it was possible that people connected with the luggage trade would have attended the ceremony. However, as explained above, this did not affect the end result.
The Trunki suitcase is well known in the UK as being ‘the one that got away’ from Dragons’ Den. The Dragons refused to invest in designer Rob Law, at least partly because of Peter Jones’ negative view of the worth of his registered design for the product. According to Jones, the Trunki could still be copied “within 7 days”. The present decision clearly demonstrates that his opinion was incorrect and that a registered design for an innovative product can be an extremely useful tool in the battle against copycats.
The Kiddee Case was also held to infringe unregistered design right in specific parts of the Trunki case including: the metal parts of the clasp, the clasp as a whole, the inside straps of the case and the tow strap.
For more information about registered and unregistered design protection please visit our website or ask your usual Mewburn contact.
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