As reported on our blog in May 2014, Magmatic (manufacturer of the Trunki suitcase) lost its High Court appeal in its infringement action against PMS. Trunki subsequently appealed to the Supreme Court and on 9 March 2016 Lord Neuberger issued the court’s judgment.

The Supreme Court upheld the ruling of the Court of Appeal that PMS’s ‘Kiddee Case’ product did not infringe Magmatic’s EU ‘Community’ Registered Design (CRD).

The decision was largely based upon the same reasoning set out in the Court of Appeal decision – i.e. that the CRD contained a clear indication of contrasting colours and shades and these were not to be found in the allegedly infringing articles (see images above where the Trunki design registration images are shown on the lefthand side).

Some of the popular press seems to have taken this as an affront to the rights of designers, as to many it seems clear that a finding of infringement should have been found given the similarity of PMS product to the Trunki product.

However, it must be remembered that in a registered design infringement action the comparison being made is not between an allegedly infringing product and the rights owner’s product. Instead the comparison is between the allegedly infringing product and the images registered as part of the registered design.

The registered design applicant is at liberty to file whatever images they choose.

Thus, the main point to take away from this case is alluded to at paragraphs 31 and 32 of the judgment of the Supreme Court:

Accordingly, it is right to bear in mind that an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses. Further, in the light of article 36(6), an applicant should appreciate that it will almost always be those images which exclusively identify the nature and extent of the monopoly which he is claiming.  

As Dr Martin Schlötelburg, the co-ordinator of OHIM’s Designs Department, has written, “the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them”

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Over and above these considerations, it is also worth remembering that an applicant is entitled to make any number of applications. More broadly, 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. It is not the task of the court to advise the applicant how it is to be done. That it may be said is a matter of practice rather than law, and if further guidance is needed it can be sought from other sources, such as OHIM.

Ultimately the responsibility for the failure of the Trunki infringement action lies in the selection of images filed as part of the CRD.

As mentioned in or report on the Court of Appeal judgment, had black and white line drawings been used in the CRD instead of computer-rendered shaded images then the infringement action might well have been successful.

Patent attorneys spend hours crafting well-written patent applications. The same care and attention should be spent in preparing drawings for design registrations.

The process of finalizing drawings for design registrations often requires input from both a professional advisor and the draftsman creating the drawings.

Although such care and attention may increase the costs involved in filing applications, ultimately a design registration that is unenforceable owing to a poor selection of drawings may be worthless, and even costly (if litigation relating to that registration is fought and lost).

If you have any questions on the Trunki case or design registration in general please do not hesitate to contact us.