[Update 2 March 2014: According to a number of newspaper reports on 28 February 2014 the High Court decision discussed in the post below has been overturned by the Court of Appeal. Update: 4 March 2014: the Court of Appeal decision is out and IPcopy’s follow up post can be found here]
Anyone who has passed through an airport recently will be familiar with the now infamous Trunki: the ingenious child’s ride-on suitcase that, I’m reliably informed, makes travelling
marginally less traumatic almost bearable fun for all the family. Trunkis, sold by Magmatic Ltd, first rose to fame on the UK TV show Dragons’ Den, when the Dragons foolishly let the chance for a slice of the Trunki pie slip through their fingers. Unhampered by this rejection, Trunkis have taken the world by storm, and Magmatic have, to put it bluntly, made a Trunki load of cash out of them.
PMS, a plastics manufacturing company, noticed the success of the Trunki and saw a gap in the market for a discount version. Their product, the “Kiddee Case” sought to fill this gap. Magmatic claimed for infringement of its Community Registered Design Right, its UK Unregistered Design Right, and its copyright in the trunki case and it accessories. The cases found themselves before the Hon. Mr Justice Arnold earlier this year, and the judgement includes some particularly interesting conclusions. [A side-by-side comparison of the CRD, Trunki and Kiddee case can be seen here]
The full Judgement can be found here, and is a relatively accessible read, but IPCopy is here to guide you through the important questions decided by the Hon. Mr Justice Arnold. So, keep your hands and arms inside the vehicle at all times, hold on tightly to the curly antennae in front of you, and let us tug you along through the highlights of the case…
How obscure does an obscure disclosure need to be?
Short answer: Really obscure. Think remote tribes in the Amazon.
Magmatic claimed that the Kiddee Case infringed Magmatic’s Community Registered Design (CRD). PMS counter-claimed invalidity and relied on one particular prior art disclosure: Robert Law, designer of the Trunki had submitted a related design known as the ‘Rodeo’ to a student plastics design award in 1998, which, that year, was specifically for luggage design. Mr Law won the award, and received it at a public award ceremony attended by a small group of people.
Magmatic argued that, while this ceremony was undeniably public, and the Rodeo design would have become known to those in attendance, the disclosure fell within the exception known as ‘obscure disclosures’. For those unfamiliar with this provision, the Community Designs Regulation states that a design is not relevant as prior art if it “could not reasonably have become known in the normal course of business to the circuits specialised in the sector concerned, operating within the Community”, and Magmatic’s view was that the award ceremony was such a disclosure.
The Hon. Mr Justice Arnold disagreed with Magmatic.
He went back to the original intention behind the obscure disclosures provision, which was to safeguard against dishonourable infringers falsifying obscure prior art and claiming it had been disclosed to a small group in a remote corner of the globe.
Against this background, the Hon. Mr Justice Arnold took the view that, since the theme of the plastics design award that year was luggage design, it would be reasonable to suppose that a person connected with the luggage trade could have attended and that the design could have become known to someone in the luggage trade as a result of the award ceremony. For the purposes of this assessment, whether or not it did become known to anyone in the luggage trade was irrelevant.
The obscure disclosures exception was therefore deemed not to apply in this case, despite the small number of people in attendance at the award ceremony.
Fortunately for Magmatic, the Hon. Mr Justice Arnold decided that the CRD was new and had individual character over the Rodeo design in any case, and the CRD was therefore declared valid.
Is grey-scale truly colour-free?
Short answer: Yes. Probably. But watch this space.
Most people with experience in design law will be familiar with the mantra that it is always preferable to file an application for a CRD without colour (unless the colour is key to the individual character of the design of course!), since designs filed in black and white cover all colours and colour combinations.
But what about grey-scale images? The Trunki CRD was filed in grey-scale, and PMS argued that because of this the design right only extended to products that mimicked the grey shading of the CRD, so that the brightly-coloured Kiddee Cases would fall outside of the scope of the CRD.
Clutching at straws, you might imagine – it has always been taken for granted that designs filed in grey-scale will also extended protection to cover any colour, and this IPCopy writer would love to know if anyone knows of any case law to the contrary.
Thankfully, the Hon. Mr Justice Arnold agreed with the straw-clutching assessment, ruling that the Trunki CRD covered all colours. However, PMS have been given leave to appeal on this point, and IPCopy will be watching for the result of the appeal with great interest.
Does surface decoration affect the overall impression?
Short answer: Not if the CRD is clearly for a shape.
Magmatic’s CRD shows a case that is free from surface decoration, whereas the Kiddee case includes a graphical design in the form of an animal print. Magmatic contended that the graphic design of the Kiddee Case should be discounted when assessing the overall impressions it creates. PMS contended that the graphical design should be taken into consideration when making that assessment. The Hon. Mr Justice Arnold agreed with Magmatic: the CRD was clearly for the shape of the case, and so the shapes alone should be compared.
What’s in the ‘design corpus’ for ride-on suitcases?
Short answer: Diddly squat.
First, some context: in assessing whether or not the Kiddee Case creates a ‘different overall impression on the informed user’ than the overall impression created by the CRD, weight must be given to, among other things, the existing design corpus in that field. In a field that is dense with existing designs, the potentially infringing design would need to very close to the protected design to create the same overall impression (a good example is the Apple/Samsung tablet case – Samsung was held not to infringe Apple’s design rights despite the product bearing many similarities to the protected design, in part because the design field for tablet computers is so cluttered that differences in only small details can create a different overall impression), while in a field with very few existing designs there can be more significant variations in appearance without creating a different overall impression.
So, it fell to the Hon. Mr Justice Arnold to decide what was in the existing design corpus for ride-on suitcases. The Rodeo design, interestingly, was not held to be a part of the design corpus, despite having previously been held to be prior art. This is an interesting quirk of design law: the criteria for a design being publicly disclosed, and the criteria for a design being a part of the ‘design corpus’ are not the same. To be considered part of the design corpus, the design must be not only disclosed to the public, but it must also be a design that an informed user (an attentive end user of the product) would be aware of.
So, the existing design corpus for ride on suitcases was restricted to conventional clam-shell style suitcases, with no (intended!) ride-on functionality. Essentially the Trunki had created an entirely new category of product in the form of a luggage-toy hybrid. Because of this, the protection afforded to the CRD was broad, and the Kiddee case would need to differ from the Trunki CRD considerably to create a different overall impression and hence to avoid infringement.
Thus, despite, the differences between the Kiddee case and the Trunki, the Kiddee case was held to infringe Magmatic’s CRD.
So there you have it. A lot of common sense decisions, IPCopy reckons, and we’ll be keeping an eye out for that appeal decision!
Emily Weal 18 September 2013