March 9, 2016

The Supreme Court has today ruled on a design infringement case brought by Magmatic regarding its ride-on “Trunki” suitcase for children. The decision represents the final step in a three-year dispute against PMS International as to whether their “Kiddee case” infringed Magmatic’s design rights in the Trunki case.  The Supreme Court has upheld the Court of Appeal’s finding of non-infringement in relation to the Community Registered Design (CRD).  The Court conceded that “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“.  The five judges found that the overall impression of the two sets of cases was “significantly different” as the Trunki cases were animals with horns, whilst the Kiddee Cases were insects with antennae or animals with ears.

The Supreme Court also made a number of interesting obiter comments as to the significance of the presence or absence of ornamentation on a CRD.  The Court observed that the absence of ornamentation itself can in principle be a design feature.  In these circumstances, the presence of ornamentation on an allegedly infringing item, whilst not necessarily determinative, is a factor which can be taken into account when assessing infringement.

The Trunki case has been the subject of the #ProtectYourDesign Twitter campaign supported by various industry personnel including the founder of Habitat and Innocent Drinks.  The CEO of Trunki has stated that he is “devastated” by the decision and that it will bring a “wave of uncertainty”.  News stories emphasise the impact this decision may have on small businesses reliant on design rights.  PMS International has stated this to be a “victory for fair competition”.

Read the judgment here and the press summary here.