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Victory for former Dragon's Den contender in design infringement case

Magmatic Limited v PMS International Limited [2013] EWHC 1925 (Pat), 11 July 2013Magmatic Limited ("Magmatic"), the designer and manufacturer of the TRUNKI brand children's ride-on suitcase has won a Magmatic Limited v PMS International Limited [2013] EWHC 1925 (Pat), 11 July 2013

Magmatic Limited ("Magmatic"), the designer and manufacturer of the TRUNKI brand children's ride-on suitcase has won a significant victory in a design infringement case against PMS International Limited ("PMS"),  the importer and seller of rival product Kiddee Case.

Magmatic claimed infringement of a number of IP rights including Community Registered Design No. 43427-0001 ("the RCD").  At trial, PMS disputed the majority of the claims and claimed that if the Kiddee Case infringes the RCD, then the RCD lacks individual character over an earlier design called "Rodeo" because the overall impression created by the RCD in comparison to the Rodeo is no more different than the overall impression created by the Kiddee Case in comparison to the RCD.

Rob Law, the founder and director of Magmatic came up with the winning idea for a children's ride-on suitcase, called "Rodeo" in a design competition in 1998.  He went on to produce further variations on the design until he devised the product which was to become the Trunki in early 2003.  After turning down an offer on BBC's Dragon's Den, Mr Law secured an agreement to supply John Lewis and the product has enjoyed significant commercial success and critical acclaim, winning numerous awards.

The Trunki product came to the attention of PMS in 2010 and it decided to exploit a perceived gap in the market for a similar discount version of the product. By virtue of Articles 4, 5 and 6 of Council Regulation 6/2002/EC on Community Designs ("the Regulation"), a Community registered design must be novel and have individual character having regard to any design which has been made available to the public.

The Court, agreed with Magmatic that the RCD represented a substantial departure from the existing design corpus (or prior art) since the overall impression given by the RCD was found to be quite different to earlier designs, particularly due to the striking differences presented by the horns and the shape and positioning of the clasps on the Trunki product.
The Court disagreed with the contention by PMS that the designer had relatively little freedom of design. Its finding on these two points was important because it meant that the RCD was entitled to a broad scope of protection, subject to the impact of Rodeo, which the Court went on to find created a different overall impression to that created by the RCD.

On comparing the shape of the Trunki and the Kiddee Case, it was found that, whilst there were some differences between the design features of the two products, the resemblance between the designs would produce the same overall impression on the informed user. The broad scope of protection to which the RCD was found to be entitled would not be reduced in consequence of the earlier Rodeo design since the Trunki product and the Kiddee Case product share greater resemblances with each other than either product shares with the Rodeo design.  Consequently PMS was found to have infringed the RCD.  The Court went on to find that PMS had also infringed four out of the six claimed design rights and had infringed the copyright in the Trunki safety notice but not in the Trunki artwork.

In a commercial world where the competition often sails close to the wind in copying features of a successful product, this serves as a warning that a truly innovative product may enjoy broader protection which will catch out copycats.

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