Trunki: Registered design law clarified

On 9 March 2016, the Supreme Court decided PMS International Group Plc v Magmatic Limited [2016] UKSC 12, 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.

The court gave key guidance on interpreting designs, which should affect how designers file designs in future:

• Black and white drawings and photos cover all colours;

• Absence of decoration can be a feature of a registered 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 computer assisted design (CAD) image. The broadest claims can be achieved by drawings showing only the contours of the design, which would just protect physical shape; and 

• 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, 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, ownership, and subsistence. With a registered design, none of this is required. 

The key lesson for designers is this: take care when filing. Any detail included in the design could be used to restrict its scope, so registrations should be as simple as possible while bearing prior designs in mind. 

But how do you make it clear your design is just for the shape and nothing else? The court did not offer any practical guidance, as it is not its role to do so; the design registries should do so. In the meantime, it is likely that a vast number of existing designs on the register will be narrower than those filing them originally envisaged, particularly those that were filed as photographs or detailed CAD drawings, which will make life easier for copycats. 

Protected feature

Registered designs protect the lines, contours, colours, shape, texture, and/or materials of the product itself and/or its ornamentation. ‘And/or’ means that a registered design can protect just one of those features. But how do you make that clear when verbal disclaimers are not permitted?

Earlier case law appeared contradictory. In Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8, the claimant argued that, in light of the registration, only product shapes should be compared, and the Court of Appeal agreed. The registered design (for an air freshener aerosol) was a series of line drawings in monochrome, and so it was taken to be shape only. 

By contrast, the Court of Appeal found in Samsung Electronics (UK) Ltd v Apple Inc [2013] ECDR 1, a case about an early design of the iPad, that the design was not for shape alone – although the design was a monochrome line drawing, it was a feature that it had an absence of other features. 

But what about the Trunki design, which was not a simple line drawing but rather rendered CAD drawings (three-dimensional images which show the suitcase from different perspectives and show the effect of light upon its surfaces)? The court held:

• The trial judge failed to give proper weight to the overall impression of the registered design as a ‘horned animal’, which was significantly different from the impression made by the defendant’s product, which was either an insect with antennae or an animal with ears; 

• The judge failed to take into account the effect of the lack of ornamentation on the surface of the registration; the court said this did not detract from the impression of a horned animal; and 

• The judge ignored the colour contrast in the registration between the body and the wheels. This was chosen by the designer, striking, and should have been taken into account.

Finally, the Supreme Court rejected the suggestion from Trunki and the comptroller of patents (intervening) that there was a point that should be referred to the European Court of Justice, particularly on whether (and how) the lack of ornamentation should be a feature in its own right.

John Coldham is a director at Gowling WLG and a member of the ITMA Designs and Copyright Committee @ITMAuk www.itma.org.uk