The makers of Trunki have recently gone through the UK courts pursuing a claim of infringement of its Registered Community (EU) Design. Trunki’s journey came to an end when the highest court in the UK, the Supreme Court, handed down its judgement – PMS International Group Plc v Magmatic Limited. The Supreme Court upheld the Court of Appeal’s decision that the Trunki Registered Community Design was not infringed. Trunki’s experience is a reminder of the care that must be taken when depicting a design for a Registered Community Design application.
The Journey to the Supreme Court
In 2013, Magmatic (the owner of the Trunki Registered Community Design) sought damages and an injunction against PMS International Group for its alleged infringing acts in the UK and Germany.
At first instance in the UK High Court, it was decided that the Trunki registration only claimed protection for the shape of the suitcase, making all surface decorations irrelevant. On this basis, the judge considered the registration to be infringed.
This judgement was overturned by the UK Court of Appeal. The errors at first instance were identified as
- a failure to give proper weight to the registration’s horned animal appearance compared to the antennae and ears of the alleged infringing products;
- failure to take account of the lack of ornamentation in the registration that emphasised the horned animal appearance;
- ignoring the colour contrast between the body and the wheels and strap in the registration.
Correcting for these errors, the Court of Appeal considered the overall impression of the alleged infringing product to be different to the registration and decided that there was no infringement of the Registered Community Design.
“It may sometimes be hard to decide if absence of ornamentation is a feature of a particular registered design”
Considerations for users of Registered Community Designs
As illustrated by this case, the choice of images for a Registered Community Design application is of critical importance to the subsequent effectiveness of the registration. Any feature present in the design depictions is likely to contribute to limiting the scope of protection provided.
The Supreme Court highlighted that “an applicant is entitled to make any number of applications… it is for an applicant to make clear what is included and what is excluded in a registered design, and he has wide freedom as to the means he uses”. Following these thoughts, care should be taken in determining a design filing strategy that will ensure that the desired scope of protection is achieved.
Despite the Supreme Court’s comments that the absence of ornamentation can be a feature of a Registered Community Design, there still remains uncertainty regarding how a design depiction can illustrate a claim to the absence of ornamentation. Approaches to achieve this will have to be considered on a case-by-case basis.
