4 September, 2013
The High Court has recently issued its decision on the case between Magmatic Limited v PMS International, providing a useful summary of design infringement in the UK. Details of the case can be found here.
In this case, the claimant is the owner of the Trunki suitcase (made famous following its appearance on the BBC show Dragons’ Den), which is essentially a suitcase moulded into the shape of an animal and which is shaped to be ridden by a child. The Trunki suitcase is covered by a Registered Community Design (RCD).
The defendant manufactured a different type of ride-on, animal-shaped suitcase called the Kiddee, which the claimant thought infringed his RCD. Arnold J, the judge presiding, agreed with the claimant.
For an article to infringe an RCD, it is necessary that the article and the RCD produce on the informed user the same overall impression. In deciding the overall impression created by an RCD, the degree of freedom of the designer when developing his design is taken into account.
In this case, since the RCD and the Trunki suitcase represented a substantial departure from the design of existing suitcases and since the designer of the RCD had considerable design freedom in selecting what the suitcase should look like, Arnold J held that the RCD was entitled to a broad scope of protection and provided a broad overall impression of a slim, sculpted, sophisticated, modern suitcase with certain animal-like features. Based on this definition, the Kiddee suitcase was held to make the same overall impression on the informed user and thus infringe the RCD. It is worth noting that since the RCD was not in colour and did not show any surface decoration on the suitcase, these factors were ignored during the overall impression assessment of the Kiddee and the RCD.
The crux of this decision was on the scope of protection given to the RCD. Although Arnold J ultimately decided that this scope should be broad, the defendant had tried to argue that the scope should have been much narrower based on the disclosure of an earlier design concept of the Trunki, known as the ‘Rodeo’, which was previously disclosed in a small student design competition before the RCD was filed. Whilst Arnold J held that the Rodeo was a prior disclosure, he held that the relative obscurity of the Rodeo disclosure meant that the informed user would not have become aware of it, meaning that the disclosure did not form part of the ‘design corpus’ for the RCD. Accordingly, the design corpus therefore consisted solely of adult clamshell suitcases, from which the Trunki was quite different. Had the Rodeo disclosure been considered to form part of the design corpus then it would have resulted in a much narrower scope of protection given to the RCD.
As well as finding infringement of the RCD, Arnold J also held that the Kiddee case infringed various UK unregistered design rights in the Trunki case itself, namely in parts of the case’s clasp, tow strap and insides (the straps and pouch).
The decision demonstrates the potential power and scope of RCDs, particularly when the RCD in question represents a significant departure in design from existing products in the market in question, and of UK unregistered design rights.
For further information on this case, please contact the Engineering and Designs group or your usual Boult Wade Tennant adviser.