Trunki case now closed as Supreme Court (regretfully) rules there is no infringement by rival ride-on…
In a nutshell, the Supreme Court Lords unanimously agreed with the Court of Appeal that the Kiddee Case created a different overall impression to that of the Trunki – the overall impression of the CRD was a horned animal which was significantly different to the impression created by the Kiddee Case which was an insect with antennae or an animal with ears. Lord Neuberger sympathised with Trunki creator Robert Law, of Dragon's Den fame, and commended him for his clever and original idea, but went on to say that design rights exist to protect designs and not ideas. It appears to be the end of the road now for Trunki as Robert Law was also refused his request for a referral to the CJEU, the highest European Court.
Today the Supreme Court has ruled that the Community Registered Design (CRD) for the popular children's ride on Trunki suitcase has not been infringed by its discount rival ride-on Kiddee Case. In a nutshell, the Supreme Court Lords unanimously agreed with the Court of Appeal that the Kiddee Case created a different overall impression to that of the Trunki – the overall impression of the CRD was a horned animal which was significantly different to the impression created by the Kiddee Case which was an insect with antennae or an animal with ears. Lord Neuberger sympathised with Trunki creator Robert Law, of Dragon's Den fame, and commended him for his clever and original idea, but went on to say that design rights exist to protect designs and not ideas.
It appears to be the end of the road now for Trunki as Robert Law was also refused his request for a referral to the CJEU, the highest European Court.
The history
We have previously published articles here and here on the various judgments leading up to the Supreme Court ruling. In brief, Robert Law's company, Magmatic Limited, obtained a Community Registered design in 2003 in the form of 6 Computer Assisted Design (CAD) monochrome drawings, with grey scale shading and distinct tonal contrasts two of which are shown above.
In 2012, Magmatic sued PMS International for infringement of its CRD, when it started to import and sell a similar cheaper ride-on suitcase called Kiddy Case, two of which are shown below:
Magmatic suffered a blow in 2014 when the Court of Appeal reversed the previous High Court decision and found that the discount rival ride-on "Kiddee Case" did not infringe the Trunki's Community Registered Design. The Court of Appeal initially refused permission to allow an appeal to the Supreme Court but, not deterred by this, Magmatic went directly to the Supreme Court and was granted leave to appeal.
The law – a recap
The test under European law as to whether a product infringes a CRD is whether that product 'produces on the informed user a different overall impression' from the registered design. As Jacob LJ summed up in the well-known Proctor & Gamble v Reckitt Benckiser case, "the point of protecting a design is to protect the design as a design. So what matters is the overall impression created by it: will the user buy it, consider it or appreciate it for its individual design?"
Supreme Court Ruling
The Supreme Court focussed on whether 3 main criticisms by the Court of Appeal of the first instance decision (handed down by Mr Justice Arnold) had been justified. Those criticisms were:
- The judge had failed to give proper weight to the overall impression created by the CRD as that of a horned animal when comparing it to the Kiddee Case;
- The judge had failed to take into account the lack of surface decoration in the CRD (which reinforced the horned animal impression); and
- The judge had ignored the colour contrast in the CRD between the body of the suitcase and its wheels and had therefore overlooked the fact that the CRD did not just cover the shape, but also the shape in contrasting colours.
First criticism
In terms of the first criticism in relation to the horned animal appearance, Lord Neuberger agreed with the CA that at first instance, Arnold J had not correctly considered the overall horned animal impression of the CRD as being particularly distinctive because he wrongly seemed to have treated the antennae and ears of the Kiddee Case as "horn-like" also. Lord Neuberger therefore concluded that the CA had been justified in its criticism that Arnold J had focussed too much on detailed features, rather than the overall impression – which was key. The overall impression created by the two designs was very different – the CRD was a horned animal and by contrast, the Kiddee Case was evocative of an insect with antennae or an animal with floppy ears.
Second criticism
In terms of the second criticism in relation to the decoration of the Kiddee Case and the absence of decoration on the CRD, Lord Neuberger agreed with the CA that the fact that the CRD image was not adorned with any imagery simply reinforced the horned animal impression created by the CRD. Although he agreed with the CA, he considered this to be a relatively minor point which simply reinforced the first criticism.
Clearly Magmatic did not consider this to be a relatively minor point as they had requested a referral to the CJEU on the question of whether the absence of ornamentation can, as a matter of law, be a feature of a registered design and if so, whether it was a feature in this case. Lord Neuberger did not consider that this needed clarification at CJEU level. In this case, the CA was simply saying that it would be wrong not to consider the surface decoration on the Kiddee Case because it significantly affects how the shape itself strikes the eye and the overall impression it gives.
Third criticism
On the third criticism in relation to the two tone colouring of the CRD, Lord Neuberger agreed with the CA that the colour contrasts on the CRD and the Kiddee Case were significantly different because the wheels and handles (or horns) of the Trunki stood out as features whereas on the Kiddee Case the wheels were largely covered and the handles were the same colour as the body. Accordingly, the CRD did not cover just the specific shape of the Trunki as held by Arnold J, but a shape in contrasting colours (represented as grey and black on the images). Therefore the Trunki and Kiddee Case should be compared on a like for like basis in terms of their colouring – and both were different.
Overall conclusion
Lord Neuberger concluded that the CA had been right to hold that Arnold J had misdirected himself in relation to the above points. The CA was right to hold that the design claimed in this case was for a suitcase on wheels in the shape of a horned animal with straps, strips and wheels in a contrasted colour or colours and the Kiddee Case created a different overall impression.
Comment
This case has been of great importance, not just to Robert Law, but also to the UK design industry in general which contributes £33.5bn to the British economy annually. Robert Law has received phenomenal support and celebrity and entrepreneurial backing from UK designers seeking clarity in this area of law, including Sir Terence Conran (founder of Habitat) ACID ambassador Kevin McCloud (and presenter of Grand Designs) and Brompton bike designer Will Butler-Adams. It will come as a massive blow to all those involved that the widespread media coverage, campaigns and initiatives, such as #ProtectYourDesigns and 'Shout about it for UK Designers' have not managed to help their cause.
The judgment calls into question just how far Community design protection really goes. It could have a significant impact on the design industry as a whole because creative entrepreneurs may be put off investing in innovative original designs for fear of similar cheaper rival products coming on the market. Or designers will just have to be more savvy when registering their designs and seek advice on the best way to represent their products at the registration stage in order to maximise on protection. Some consider that the Trunki design should have been registered as line drawings rather than CAD drawings to give it more protection.
Robert Law is understandably incredibly disappointed and issued a press release on the website of ACID of which he is a member, "We are devastated and bewildered by this judgment, not just for ourselves but for the huge wave of uncertainty it brings to designers across Britain". No doubt this will be the general view of the wider design industry and it is likely that we will see other cases in the future seeking further clarification in this area of law.