Knowledge & News

No infringement of registered design in Trunki case

9 March 2016

The Supreme Court today handed down a landmark ruling in the “Trunki” case, clarifying the scope of protection afforded by UK and European Community registered designs. The Court upheld the decision of the Court of Appeal that PMS’s “Kiddee Case” had not infringed Magmatic’s registered design for its well-known Trunki suitcases. The Supreme Court nevertheless expressed sympathy for Magmatic recognising that the Trunki was both original and clever. However, it explained that registered designs were not concerned with an idea or an invention but protecting a design.

The case involved a registered design for children’s ride-on suitcases owned by Magmatic, a British company. Magmatic accused PMS of infringing its registered design with its own ride-on Kiddee Case. A registered design protects any aspect of the appearance of the whole or a part of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

The UK High Court held that PMS’s product infringed Magmatic’s registered design, but the Court of Appeal thought otherwise and held that there was no infringement. Magmatic then appealed to the Supreme Court.

The registered design in question did not have any surface decoration. However, the design indicated that different parts of the design had contrasting (non-specific) two-tone colouring. One of the important questions for the Supreme Court was whether the two-tone colouring should be considered in comparing the design and the product alleged to infringe. The Court of Appeal had decided that the design was not just a specific shape (a horned animal) but a shape in two contrasting colours and therefore when comparing the allegedly infringing product with the design the colouring of the design had to be taken into account. The Supreme Court agreed with this approach.

Today’s judgment ends the long-running, high-profile dispute between Magmatic and PMS. It cannot be escalated further because the Supreme Court decided not to refer any questions to the Court of Justice of the European Union. The practical effect of the judgment for Magmatic and PMS is not yet known, particularly as other intellectual property rights were in issue (but these did not form part of the appeal to the Supreme Court).

There will be many within the design industry that will be disappointed with the Supreme Court’s decision today and conclude that designers are not adequately protected. However, the Courts need to strike a balance between fair protection and free competition. Given the monopoly nature of registered designs, the ease with which they can be obtained (in terms of application procedure, time to grant and cost), the long duration of protection, and the wide geographic scope of European designs, something has to give. That something is the legal scope of protection. The Supreme Court has confirmed today that a registered design has a narrow scope of protection, but the decision does not render registered designs ineffective. A registered design is a valuable intellectual property right that can protect the look and feel of a product or part of a product for up to 25 years.

Many industries, not just the toy-design industry use registered designs. To name just three, the electronics, fashion and furniture design industries have many thousands of registered designs to their name. With a little forethought, registered designs will remain highly effective ‘Keep off the grass’ signs to competitors. To maximise protection, where possible, layers of registered design protection should be obtained. For example, this could mean a registered design to protect the product as a whole (eg with line drawings) and a separate design or designs to protect distinctive parts or features of the product. Following this case, where possible, companies should in particular consider protecting variations or other embodiments of the design. Significant cost savings can be made if multiple related designs are filed at the same time.

Thomas Edison said that the value of an invention lies in putting it into effect. With a design, the value lies in protecting, so far as possible, all commercial embodiments.


Vicky Butterworth

Vicky Butterworth Of Counsel London (UK) Solicitor (UK)

Michael Moore

Michael Moore Partner London (UK) Solicitor (UK)

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