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Posted on Mar 06, 2014 by Andy Harris  | Tags: registered design  | 0 Comments

By Andy Harris

An interesting appeal case was reported this week involving a Dragons' Den reject and a battle over animal-themed childrens ‘ride-on’ luggage cases.  This also involved registered design right, an area of IP which gets rather less publicity than its elder siblings (patent, trade mark and copyright) but which can be no less valuable.

Now now children...

The dispute related to the registered community design  (RCD) which Magmatic (a successful company despite the Dragons of the Den not biting) had registered for its ‘Trunki ‘ childrens luggage product.  It claimed that PMS International was infringing its design with its ‘Kiddee Case’ product, which was also an animal-themed ride on luggage case.    

Magmatic won the first decision at court, but as so often happens, that decision was successfully overturned on appeal.

Horns or floppy ears?

With a registered community design, (as with UK registered design) infringement occurs if the ‘offending’ product creates the same overall impression to the informed user as the original product. (If you don’t register a design and rely on unregistered design rights then you need to prove your design was copied. Registering your design should therefore make it easier to protect it).

PMS admitted that their product was inspired by the Trunki.  However they argued the overall impressions were not the same. They pointed out that Magmatic had previously produced a childrens ride-on luggage case called the ‘Rodeo.’ For Magmatic to get an RCD for the Trunki meant the Trunki design had to be new and have individual character (otherwise it would not have been granted). They argued that this meant the Trunki must therefore create a different overall impression to the Rodeo, and in the same way, their Kiddee Case must create a different overall impression to the Trunki. In other words, if A was different to B, then B must be different to C. 

The court agreed.It felt that the Trunki was more sleek and stylised and created the impression of a horned animal , while the Kiddee Case was softer, more rounded and suggestive of an insect with antennae or an animal with floppy ears.   More complex points also arose regarding the relevance of surface ornamentation and colour contrasts which are beyond the scope of this short blog. However they may well be considered again if an appeal to the Supreme Court is taken.

Moan moan...

Two moans to finish with. The first being the extent to which IP litigation decisions, perhaps more so than any other area of litigation, vary so much from court to court, when the same rules are being applied.  No doubt this is because the considerations involved are ultimately quite subjective ones.  For example deciding if there is a ‘likelihood of confusion’ between two trade marks, or, as in this design case, whether one product creates  a ‘different overall impression’  from another.   

For those of us advising clients in field of IP commercialisation it doesn’t help.  Businesses want certainty, and black and white answers. But IP infringement frequently involves large areas of grey. If the cleverest legal minds in the country can’t agree then it doesn’t bode well for the rest of us...

The second moan is why adult ‘ride-on’ luggage cases are not deemed socially acceptable. Kill joys.

Andy Harris

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