Trunki case has prompted less detailed design rights applications, says expert

Intellectual property law specialist Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said designers were now cautious to include too many details of their designs, such as colour and surface decoration, in design right applications to make it difficult for copycat designs to get round the registered rights. The practice of filing less detailed design drawings was prompted by a Court of Appeal ruling in 2014 in a case involving claimed infringement of a Community registered design for 'sit-on' animal suitcases for children, he said.

The Court of Appeal's ruling, that the Community registered design for Magmatic's Trunki suitcases was not infringed by a rival suitcase designer PMS International Group (PMS), overturned an earlier judgment by the High Court.

The High Court had also ruled that PMS' Kiddee Case suitcase design infringed UK unregistered design rights owned by Magmatic but rejected claims of copyright infringement made by Magmatic against its rival. PMS had earlier conceded one claim of copyright infringement. Only the High Court's finding of infringement by PMS of Magmatic's Community registered design was appealed to the Court of Appeal.

The Court of Appeal's ruling on the Community registered design aspect was upheld by the Supreme Court earlier this week.

Connor said that whilst he thought Magmatic had had a hard time in court, the law on registered designs had counted against the company.

"A design right does not protect an idea, no matter how novel, and so Magmatic was never going to be able to protect a monopoly for sit-on, animal-like suitcases despite being a ‘first of type’ design," Connor said. "The case has led to design drawings being submitted to the Intellectual Property Office without specific embellishment to ensure that competitors can’t so easily design around pre-existing registered designs as happened in this case."

The Supreme Court evaluated whether the Court of Appeal had been "materially wrong" in the approach it adopted when overturning the High Court's judgment in relation to Community registered design rights (CRD) infringement.

In his leading judgment which was unanimously supported by the four other Supreme Court judges, Lord Neuberger said that the Court of Appeal had not erred in its approach and that there was no need to make a referral to the Court of Justice of the EU (CJEU) for help in interpreting points of EU law to reach enable the court to reach a decision in the dispute.

Lord Neuberger said: "The Court of Appeal was right to hold that the design claimed in this case was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product. Given that the Court of Appeal was right to hold that [the High Court judge] misdirected himself … I consider that they were … entitled to hold that the judge materially misdirected himself, and that the Court of Appeal should reconsider the question of infringement for itself."

"Because the Court of Appeal addressed the question of infringement on the correct basis in law, this court should be very slow indeed to interfere with their conclusion that the Kiddee Case did not infringe the CRD. I see no grounds for questioning [the Court of Appeal's] conclusion, even if I considered that another judge (or even I) might have reached a different conclusion," he said.

Lord Neuberger said that he "would have reached the same conclusion" as the Court of Appeal did that Magmatic's Community registered design was not infringed by PMS.

"It is a conclusion I would have reached with some regret, as the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever," Lord Neuberger said. "Furthermore, it appears clear that … PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design."

A design must be new and have 'individual character' in order to qualify for Community design rights protection.

According to the EU's Community Design Rights Regulation, registered Community designs are considered to have individual character "if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public … before the date of filing the application for registration or, if a priority is claimed, the date of priority".

The degree of freedom of the designer in developing designs must be taken into account during any assessment of the individual character of those designs. Other factors such as the nature of the product associated with the design and the sector in which the product belongs are also factors that should be considered, according to the Regulation.

According to EU case law, the assessment of whether a design has individual character is determined by the overall impression that it produces on the informed user of that design, which will change from case to case.