Trunki loses at the Supreme Court
Intellectual Property
Registered designs :
Trunki loses at the Supreme Court
John Coldham
MEMBER OF THE ITMA DESIGNS AND COPYRIGHT COMMITTEE AND DIRECTOR , GOWLING WLG , UK
On 9 March 2016 , the Supreme Court decided the Community Registered Designs case about Trunki suitcases for children . While the design was " both original and clever ", the Court decided " with some regret " that the Defendant , PMS , had not infringed – the appeal was not concerned with an idea or an invention , but with a design
Trunki is a British success story ; from humble beginnings , by 2011 20 per cent of all 3-6 year olds in the UK possessed a Trunki product . By 2014 the award-winning product was sold in 97 different countries . In 2012 , the managing director of PMS saw the Trunki product while travelling , recognised its qualities and decided to create a discount version .
What does the judgment mean for designers ? The Court gave key guidance on interpreting designs , which should affect how designers file designs in future :
• Black and white drawings / photos cover all colours .
• Absence of decoration can be a feature of a registered design . Simplicity or minimalism can be an aspect of design , and it would be " very curious if a design right registration system did not cater for it ".
• A line drawing is much more likely to be interpreted as not excluding ornamentation than a CAD image . The broadest claims can be achieved by drawings showing only the contours of the design ,
Registered designs can also protect the materials of the product itself
Trunki ’ s award-winning products were on sale in 97 different countries by 2014 which would just protect physical shape .
• As designs are cheap to register , a designer can " make a large number of different applications ", is " entitled to choose the level of generality at which his design is to be considered ", and if he chooses too specific a level , " he may not be protected against similar designs ". Should designers bother with registered designs given they are so narrow ? Although UK unregistered designs tend to be more successful at court ( as seen by Trunki itself at first instance ), partly because they are limited to shape and as such are generally broader , this does not tell the full story . Unregistered rights require the claimant to prove copying , and to prove ownership and subsistence .
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