Posted on 7.7.16 by Gemma Lingard
Back in March the popular children’s suitcase manufacturer Trunki, owned by Magmatic, lost its battle against rival maker Kiddee in the London Supreme Court having claimed its rival had breached their intellectual property rights. The judgement at the time sparked a varying degree of outrage that a good British brand could be ‘ripped off’ and a cheaper version sold without infringing design rights. We feel it’s time to have a look at this case and what we learnt from the dispute.
Recap of the Case and Judgement
The case hinged around whether design rights held by Trunki, whose cases are designed to look like animals with space for children to sit on top, had been infringed by Hong Kong based Kiddee, whose cases are designed to look like animals with space for children to sit on top.
Aside from our facetious tone, the Court and its five Supreme Court Justices ruled unanimously that Kiddee had not infringed design rights. The judges commented that Kiddee had obviously seen Trunki and consequently made its own cheaper model but said the design was sufficiently different.
Why did the Court rule as it did?
The crux of the case surrounded Community Registered Design protection and NOT against the copying of an idea or invention. Justice Lord Neuberger explained that, “Unfortunately for Magmatic this appeal is not concerned with an idea or an invention, but with a design.” So although the Trunki design was both original and clever it was not relevant in this case.
Chair of the Chartered Institute of Patent Attorneys (CIPA) David Musker, said, “Patents protect inventions, so are infringed by anyone who uses the same invention, whereas registered designs only protect what a product looks like. If a rival product is sufficiently visually different then the rights are not infringed.”
Upon the ruling Trunki founder and Magmatic Chief Executive Rob Law said he was “devastated and bewildered.” Almost everyone had sympathy and acknowledged that he had created a brilliant invention, however, Trunki had protected their original product with only six monochrome computer generated registered designs of the exterior of the case which did not show any surface decoration, and it is this what seems to have been the downfall of the case. Trunki was trying to use these registered designs to exclude a competitor’s design from the consumer market, but it wasn’t enough to protect it from the design differences.
What Trunki did wrong and how to protect your Design Rights
The Supreme Court said that Magmatic had not considered numerous things with its computer registered design, such as: the colour contrast between the wheels and body and the lack of inclusion of the surface decoration and markings which had not been protected in the design and therefore could not be considered during the ruling.
At the time Intellectual Property experts said the ruling was a blow to independent creative businesses who rely on design rights to protect their products, but it seems that the ruling may provide clarity to design protection laws and has highlighted the importance that design rights protect designs, not ideas.
In order for a designer to protect their ideas, it’s vital to get professional, expert advice. Trunki had just one registered design but with ideas such as these it may be better to have a series of designs registered; this way you know your design is as protected as it can be. Before you disclose your invention and design to someone else, a qualified Intellectual Property expert will give you the advice so you have the best possible protection.
To speak to one of our qualified and trained Intellectual Property lawyers, call us today on 0161 930 5151 or send your enquiry to firstname.lastname@example.org and we will get in contact with you at a convenient time.