The UK’s Supreme Court has handed down its eagerly anticipated ruling in the long running Trunki litigation.  The Court expressed its regret at finding the Community Registered Design (CRD) in issue not infringed.  This appears to be the right result when the product which was alleged to infringe is compared with the design as registered.  However, the judgment is a salutary reminder to designers seeking registered design protection to give careful consideration to how their design is graphically represented in the design application.  This is crucial as it will determine the overall scope of protection provided by the registration, as the owners of the CRD in the Trunki case found to their cost.

Factual background

The litigation concerned a CRD for a children’s ride-on suitcase, owned by Magmatic Limited (‘Magmatic’).  The suitcase was sold under the trade mark ‘Trunki’.  The CRD consisted of six 3D CAD produced images in monochrome with grey-scale shading and distinct tonal contrasts.  Two of the images are reproduced below.  Crucially, the horns, front and rear clasps and the body were shaded light grey whereas the wheels, spokes, top strap and front and rear strips were shaded black.

In February 2013, Magmatic issued proceedings against PMS International Group Plc (‘PMS’) alleging that PMS was importing and selling in the UK and Germany a ‘Kiddee Case’ which infringed the Trunki CRD.  Two examples of the Kiddee Case referred to the Supreme Court’s judgment are represented below.

In the High Court and Court of Appeal

Under the Community Design Regulation (EC No 6/2002) the question for the court was whether the Kiddee Case ‘produced on the informed user a different overall impression’ from the Trunki CRD.  If so, there was no infringement.  In the High Court, Arnold J held that the Kiddee Case did infringe the Trunki CRD.  He identified individual features of similarity and difference between the Kiddee Case and the Trunki CRD and, on the basis of those, concluded that the Kiddee Case did not produce on the informed user a different overall impression from the Trunki CRD.  PMS appealed.

The Court of Appeal overturned Arnold J’s ruling, finding that the Trunki CRD was not infringed.  The Court found Arnold J’s judgment to be wrong in three respects.  First, he had focused too much on the individual similarities and differences between the two designs rather than carrying out a global comparison of the two.  Second, he had failed to take colour and ornamentation on the Kiddee Case (and lack of it in the CRD) into account.  Third, he had wrongly ignored the grey/black colour contrast between the various features on the Trunki CRD which was not present on the Kiddee Case.  In light of these errors, the Court of Appeal made its own fresh assessment of whether the Kiddee Case infringed.  It held that the overall impression created by the Kiddee Case design when compared with the Trunki CRD was “very different” and found that the Trunki CRD was not infringed.  Magmatic appealed to the Supreme Court.

The Supreme Court

The Supreme Court unanimously agreed with the decision of the Court of Appeal and held that the Kiddee Case did not infringe the Trunki CRD.  In so doing, the Court approved the reasoning of the Court of Appeal, agreeing that there had been errors in Arnold J’s original ruling which had entitled the Court of Appeal to substitute its own (different) finding on infringement.  The Supreme Court’s judgment focused on the three specific areas of criticism of Arnold J’s ruling.

A global comparison must be made

The Supreme Court agreed with the Court of Appeal that the correct approach to assessing whether the Kiddee Case ‘produced on the informed user a different overall impression’ from the Trunki CRD was to make a global comparison of the two designs (rather than looking at individual features of similarity and difference).  The Supreme Court held that the overall impression of the Trunki CRD was that of a horned animal and, when a global comparison was made, this was a different impression from that given by the Kiddee Case design.  Arnold J had not mentioned in his judgment the fact that the Trunki CRD images presented as a horned animal.  Given the otherwise detailed nature of his judgment, the Supreme Court concluded that Arnold J had wrongly overlooked this when making his decision on infringement.

The relevance of ornamentation

The Supreme Court also agreed with the Court of Appeal that Arnold J had been wrong in failing to take colour and ornamentation on the Kiddee Case (and lack of it on the Trunki CRD) into account.  The Supreme Court said that the Trunki CRD did not include any ornamentation or other imagery and this reinforced the overall impression of the Trunki CRD as a horned animal with a nose and tail.  In contrast, the overall impression given by the Kiddee Case was influenced by the two tone colour of the body and the spots on the flank which made the case look like a ladybird, with the handles on the head appearing as antennae.  This meant that the Kiddie case produced on the informed user a different overall impression from the horned animal in the Trunki CRD images.  The same conclusion applied to the second example of the Kiddee Case referred to in the Supreme Court’s judgment.  Here, the stripes on the flank and the whiskers on either side of the nose immediately conveyed to the informed user that this was a tiger with ears and plainly not a horned animal.

The Supreme Court spent some paragraphs of its judgment discussing whether lack of ornamentation could be a feature of a CRD.   The Supreme Court concluded that it could saying that simplicity or minimalism could notoriously be an aspect of a design and that it would be very curious if a design registration system did not cater for it.  Whether lack of ornamentation was in fact a feature of any particular CRD depended on the proper interpretation of the individual registered design.  If it was, the fact that a similar product used ornamentation did not mean that the CRD was automatically infringed.  It was simply one factor to be taken in account in the global comparison of the overall impression given by the two designs.   The Court declined to decide whether the lack of ornamentation was a feature of the Trunki CRD.  After considering the arguments for and against (including the unlikelihood that a suitcase for a child would positively require no ornamentation as against the fact that detailed CAD rather than line drawings had been used), the Court preferred to leave this question open.

Colour contrasts

The Supreme Court also agreed with the Court of Appeal that Arnold J should have taken into account the contrast in the Trunki CRD between the grey body and the black wheels, spokes, straps and strips.  The inference from this was that the components shown in black were intended to be a contrasting colour to that of the main body of the suitcase.  In other words, the CRD claimed protection not merely for a shape but a shape in two contrasting colours.  Comparing like for like, no such colour contrast was present on the Kiddee Case (indeed the wheels were largely hidden) meaning that it produced a different overall impression on the informed user.

Supreme Court’s decision

On this analysis, the Supreme Court concluded that the Trunki CRD was for a wheeled suitcase in the shape of a horned animal but that it was not a claim for a shape alone but for one with a strap, strips and spokes in a colour which contrasted with that of the remainder of the product. In light of this conclusion, the Supreme Court ruled that the Kiddee Case produced a different overall impression on the informed user and did not infringe the Trunki CRD. However, the Supreme Court expressed its regret at reaching this conclusion.  It declined to make a reference to the Court of Justice of the European Union for a ruling on the law around how a court should interpret CRD images and whether the absense of ornamentation could, in fact, be a feature of a CRD saying that neither raised points of EU law and that the law was already sufficiently clear on these issues.

Comment

Many people reading this judgment will be sympathetic to the Supreme Court’s regret on finding that the Trunki CRD had not been infringed.  Indeed, ACID, an organisation representing designers in the UK, stated that the ruling “was a sad day for design”. Dids Macdonald, OBE., CEO of ACID said in a statement released on the organisation’s website, “This plunges design law into an abyss and will foster widespread confusion for UK designers. The ability to rely on clearly defined and enforceable intellectual property rights, and in this case a registered Community design right, has been denied and will contribute to design law chaos allowing those who produce lookalikes a free rein. The Supreme Court’s decision is a sad day for justice and for UK designers.”  The Supreme Court had anticipated criticism by recognising that the concept of the Trunki was clearly both original and clever.  Indeed, it had won numerous awards and been a significant commercial success.  It also appeared that PMS had conceived of the idea of manufacturing the Kiddee Case after seeing a Trunki and discovering that a discount model was not available.

However, Magmatic’s dismay all stems from the shortcomings of its own design registration. As the Supreme Court confirmed, in assessing whether a design alleged to infringe produces a different overall impression to the informed user from the CRD, the law requires a court to make a dispassionate and clinical comparison between the design as it appears on the register on the one hand, and the alleged infringer’s product in the market on the other.  Whether the alleged infringer intended to copy the design or otherwise ride on the coat tails of its commercial success are not relevant to this assessment.

The judgment confirms that what counts is the interpretation of the images in the CRD.  Designers seeking registered design protection should take heed.  How their design is graphically represented in the application will determine the scope of protection provided by the resulting registration.   What the images do and do not show is crucial.  Careful consideration should be given, for example, to whether a design should be depicted in the form of a line drawing, CAD image, or photograph of the actual product (or a combination of all), and whether multiple applications should be filed showing all parts of the design from different angles, in different colours, with or without surface decorations, etc.  All of this will ensure that the designer obtains the broadest possible protection.  Specialist advice should always be sought on this issue when a registered design application is being made.