Innovative designs enjoy broader protection than you might expect
If you have been on holiday this summer, you cannot have failed to have noticed an array of children’s suitcases being pulled through the airport, tripping up fellow passengers and generally adding to the chaos of the airport experience.
Well, Magmatic Limited is one company behind such a children’s case, namely the Trunki: an animal-shaped ride-on suitcase. Magmatic has won its case in the UK High Court against a rival product based on enforcing its Community registered design for the suitcase. The Managing Director of the infringing company, PMS International Limited, spotted the Trunki whilst travelling, and began marketing a rival case called the Kiddee. The High Court judge held that the Kiddee design infringed Magmatic’s Community registered design, as well as some unregistered design rights and copyright in the Trunki design.
The creator of the Trunki design, whilst a design student, had won an award for a prototype of the Trunki, called the Rodeo. PMS attempted to challenge the scope of Magmatic’s registered design by virtue of the disclosure of the Rodeo design at the award ceremony, which occurred well before the filing date of the Community registered design by Magmatic. However, the judge ruled that because of the relative obscurity of the award ceremony to end users, this could not be used as a prior disclosure that could narrow the scope of protection of the registered design.
The judge held that the Trunki design represented a significant departure in the design of suitcases, and so should have broad protection. Accordingly, the judge held that even though the Kiddee design was not the same as the design as registered by Trunki, the overall impression created by the Kiddee design was sufficiently similar to that created by the Trunki design, and so infringement had occurred.
The judge also ruled that various aspects of unregistered design right protection were infringed by the Kiddee suitcase, as well as one aspect of copyright in the Trunki product.
An important message from this case is that if a design is quite different from known designs in a particular field, a court should give a broader scope of protection to any associated registered design, which should assist in enforcing the registration against infringers. In this case, the Kiddee design was not identical to the Trunki design, but because the Community registered design was given a broad scope of protection, infringement was held to have occurred.
Indeed, Trunki’s position could be further strengthened through the filing of a 3D trade mark registration for the shape of the suitcase – particularly bearing in mind the unique characteristics of the case which are nothing to do with functionality of the product. A registered design will only give protection for a maximum period of 25 years, whereas a trade mark registration can provide monopoly rights indefinitely. This is an excellent example of where different intellectual property rights, if utilised correctly, can dovetail together to provide robust and enduring protection for the brand.
Authors: Simon Robinson & Rosalyn Newsome
