The decision is a blow for designers that rely on design rights and is expected to have far reaching consequences.
The Supreme Court has today delivered its ruling and has unanimously dismissed Trunki’s appeal to overturn an earlier appellate court ruling that found PMS International’s Kiddee Case had not infringed the Trunki design.
Magmatic had alleged that PMS International’s Kiddee cases infringed its registered design rights. The suitcases by both companies were decorated to look like animals and insects.
The case had focused on the issue of whether surface decoration sought to be a consideration in deciding whether design rights have been infringed. The Supreme Court found that whilst the Kiddee Case has a “number of features similar” to Trunki’s community registered design (‘CRD’) it also has a number of differences to the original copyrights, examples cited were its use of colour and coloured wheels.
Lord Neuberger in his judgment stated that the design was reached “with some regret” as “It appears clear that Mr Beverley of 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.”
Paul Beverley, managing director of PMS International, has made no secret of the fact that his idea for Kiddee cases was inspired by Trunki luggage. Understandably he welcomed today’s decision as “victory for fair competition”. He added “Today’s decision in PMS’s favour ensures that the Kiddee case can continue to be sold to price-conscious UK families.” Beverley continued “We try always to work within the law and successive courts have agreed that there is no way our popular Kiddee Case can be mistaken for any other product. In reality we are operating in very different markets from our rivals and we have never been competing for the same customer base.”
Trunki’s founder Rob Law told Sky News that the decision would “bring a wave of uncertainty for designers across Britain as courts in other EU nations have taken a more robust approach to protection. He added “We created an original product in Trunki and protected it by computer generated registered design- a process used to protect a third of design across Europe. In my honest opinion, the Trunki was wilfully ripped off. We stood up to this behaviour, held it to account and took our case all the way to the highest court in the land- only for the judges to rule that we are not protected against the copy. They’re effectively sending knights into battle without armour.”
Today’s ruling will inevitably have far reaching consequences for UK design and creative industries. Registered designs can be a cheap and effective way for designers to protect their designs. The decision shows that in reality it can still be notoriously difficult and expensive to enforce these rights.