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The UK Supreme Court recently ruled that the Kiddee Case (pictured above) did not infringe the registered Community design (RCD) owned by Magmatic Ltd, the makers of the Trunki.
Guidance, published by the UKIPO in response to the ruling, provides filing advice to applicants.
Magmatic Ltd sell a children’s ride-on suitcase called a Trunki. PMS International sell a children’s ride-on suitcase called a Kiddee Case.
In an appeal court judgement in April 2014, it was decided that the makers of the Kiddee Case, PMS International, did not infringe the registered Community design held by Magmatic for their Trunki. This reversed the decision of Hon. Mr Justice Arnold in the High Court from July 2013.
The appeal decision rested on the interpretation of the greyscale drawings (one of which is shown opposite) filed by Magmatic Ltd, and that whilst a particular colour is not shown, “a distinct contrast in colour between the wheels… the strap… and the rest of the suitcase” is shown, and this contrast should be taken into consideration when assessing the overall impression.
Trunki sought to reverse this decision at the UK Supreme Court, but were unsuccessful and in March 2016 it was declared that the Kiddee Case produced by PMS International did not infringe the registered design rights held by Trunki.
As mentioned above, the case rested on the interpretation of the greyscale drawings (also known as representations) filed by Magmatic.
Because of this, the UK Intellectual Property Office (UKIPO) has issued detailed guidance on the use of representations when filing Registered Design applications.
The guidance is summarised by the UKIPO here.
They advise that those wishing to protect their design should “seek legal advice” before submitting an application and that, whilst not discouraged from doing so, applicants should “take care” if they choose to file their representations in the form of greyscale computer-aided design drawings rather than line drawings.
…the Supreme Court’s judgment places much emphasis upon the distinction between those designs which are intended to protect shape alone, and those which are intended to protect both shape and other features.
Although line drawings have been effectively used to signify shape-only, the law does not require that applicants state the ‘type’ of protection intended when submitting a UK registered design application.
The UKIPO add that they are keen for the application process to remain “accessible and flexible” for all.
Applicants are advised to use “simple line drawings” that reflect the court’s confirmation that “overall impression can be determined by the representations used”.
The scope of the protection conferred by a Community design includes any design which does not produce on the informed user a different overall impression.
Following the Trunki ruling, it is important to remember that whilst designs remain a powerful tool, they are perhaps not as straightforward as they may first appear.
It is strongly advised that applicants obtain legal advice before filing.
In giving the ruling, Justice Lord Neuberger explained that while the Trunki was a good invention, which was copied in the Kiddee Case product, that was not the issue at hand;
Unfortunately for Magmatic this appeal is not concerned with an idea or an invention, but with a design.
The visual design of the Trunki was “significantly different from the impression made by the Kiddee Case”, and therefore Magmatic’s rights were not infringed.
Applicants are advised, were possible, to file line drawings as their representations. That way the registered design will not be limited to contrasts in the surface colour which was the situation in the Trunki dispute where the dark wheels and light body could be any colour but had to be substantially different.
Applicants are also advised to register all their known designs even if the differences between designs are subtle. That way and any minor differences in the look of a family of products can each be individually protected with a separate design registration. This can be done cost effectively by including multiple designs in the same application.
Designs are a quick and relatively cheap form of protection and should remain part of the designer’s IP protection arsenal.