The Supreme Court has today handed down its judgment in the longstanding dispute between Magmatic Ltd, the makers of the ever familiar children’s ‘ride-on’ suitcases shaped like animals, and PMS International Ltd, a competitor who set out to market and sell similar alternatives.
Magmatic’s founder, Mr Law, registered a community design for his product in 2003. The design consisted of 6 computer generated, black and white 3D images of the early versions of what became the Trunki case. Following that registration, Mr Law went on to exploit the value in that protected product by licencing it commercially. The product went through several phases of development and improvement, and eventually Magmatic itself began to sell direct to market.
In 2012 PMS International jumped on the bandwagon and, admitting its part inspiration from the Trunki case, began selling its cheaper version of a children’s animal themed ride-on case.
The owners of Trunki sued. After losing at first instance, the Court of Appeal overturned the decision last year and found PMS International had not infringed the Community Registered Design (“CRD”). The Supreme Court today agreed with the Court of Appeal. It decided that the assessment of whether the CRD had been infringed required consideration of the shape of the suitcase as well as the surface decoration on the designs themselves and the colour contrast between parts of the case such as the wheels and handle. The proper characterisation of the design and assessment of whether any article actually infringes should involve a global comparison of the products. Sadly for Trunki, the Supreme Court agreed that for several reasons, including the difference in the impression of the contrasting wheel colours, patterns and contrasts in shape, the two designs were in fact very different.
The decision marks a disappointment for owners of registered design rights, who face the ever increasingly difficult problem of defining what will and what will not infringe the design registered. The decision will be hailed as important, but practitioners and businesses alike will have to remember that each and every case will turn on its particular facts. There is no ‘one size fits all’ rule, and perhaps that is unsatisfactory. However, lessons can also be learnt for those looking to register designs, to ensure they do so as effectively as possible.
If you would like guidance on any design rights or other intellectual property issues please contact Tracey Singlehurst-Ward.