Practical tips for design applications after the Trunki case
The importance of the overall impression of a registered design on its scope of protection has been highlighted in the Supreme Court judgement in PMS International Group PLC v. Magmatic Limited. Magmatic makes and sells the well-known “Trunki” ride-on suitcases for children, and has a European Community registered design for a case of a very similar shape. Magmatic alleged that the Community registered design was infringed by the importation and sale of two versions of a case called the “Kiddee Case”. The Kiddee Case, like the Trunki, is a ride-on child’s suitcase designed to look like an animal, with a respective wheel at each bottom corner, a clasp at the front and a saddle-shaped top.
Despite these similarities, the Supreme Court upheld the decision of the Appeal Court that the similarities in the designs were not sufficient to establish that the importation and sale of the Kiddee Case infringed the Community registered design. Although the design shown in the registration carried no surface ornamentation, it was decided that the design resembled an animal having horns which doubled as handles. On the other hand, one of the Kiddee Case designs had circle markings that made it resemble a ladybird so that the handles on its “forehead” looked like antennae, the other design resembling a tiger having handles for ears. The Court therefore felt that the Kiddee Case designs created a different overall impression from the registered design.
The surface design features (the ladybird’s spots and the tiger’s stripes) of the Kiddee case designs were a factor in deciding there was no infringement, even though the registered design included no surface decoration. As an aside, the Court considered the issue of whether the registered design would only extend to designs which had no surface markings/ornamentation and noted that the absence of features, for example to give an uncluttered appearance, could be an essential feature of the design. However, if the registration represents the design in the form of line drawings (instead, for example, of photographs or CAD images) then the design is less likely to be considered to require the exclusion of surface ornamentation.
The judge expressed some regret at the conclusion, conceding that the concept of a ride-on wheeled case that resembles an animal seems to have been both original and clever. It should thus be borne in mind that registered designs protect features of appearance of an item, whereas a patent can protect the functional attributes of a product.
In that connection, registering a design can provide a cheap and effective way of providing protection for features that have been selected or devised in order to make an item look good. However, in the light of the decision, it may be prudent to provide line drawings if protection is being sought for the shape of an item. Since a single registered design application can cover a number of designs, it may also be worth considering including likely variants of the design to be protected (including versions with different surface ornamentations) in the registered design application.
