Shape matters - or not as the case may be

Publication March, 2016

On 9 March 2016 the UK Supreme Court handed down its judgment in an appeal concerning the alleged infringement of Magmatic’s Community Registered Design (RCD) for a ride-on suitcase, known in the market as the “Trunki”.  

The Supreme Court dismissed Magmatic’s appeal against the Court of Appeal’s earlier decision which found that the allegedly infringing “Kiddee” ride-on suitcase did not in fact infringe the RCD.  It further held that the Court of Appeal was justified in overturning the original decision of Arnold J in the High Court, which had found in Magmatic’s favour, since the judge had misdirected himself and made errors in his approach to the issue of infringement. Ultimately, the Kiddee suitcase creates a different overall impression on the informed user and for that reason, the Kiddee did not infringe the Trunki. Finally, the Supreme Court held that there were no points of EU law requiring reference to the CJEU.  This case solely concerned the interpretation of particular images of a particular RCD.

The RCD in question was represented by number of greyscale computer aided design (CAD) images of a Trunki. The products shape and contours were represented by different shades of grey. The wheels, the strap and a central rubber seal were shown in a contrasting colour.

The judgment was hotly anticipated since clarification was badly needed as to how a court should interpret computer generated design drawings used for registered design representations. Was the RCD in respect of the shape of the Trunki alone? Or was it for the shape of the article, but with a positive absence of surface decoration, since none was shown on the drawings? And what was the effect of showing the wheels, strap and a central rubber seal in a contrasting colour? While the Supreme Court has given some guidance, it did not decide whether the RCD in question was one which included, as a feature, a positive absence of surface decoration.

In the High Court, Arnold J had decided that the RCD was for shape alone and therefore the colours and surface decoration of the Kiddee case should be ignored. He also found that Trunki was a truly novel design when it was created and therefore enjoyed a commensurately wide scope of protection. Arnold J concluded that the Kiddee case produced the same overall impression as the Trunki and therefore infringed.

The Court of Appeal found errors of principle in Arnold J’s decision which the Supreme Court reiterated as follows:  (1) the judge failed to give proper weight to the overall impression of the RCD as one which evoked an animal with horns (2) that he failed to take into account the effect of the lack of ornamentation on the surface of the RCD and (3) that the colour contrast between the body and the wheels etc. had been ignored.

The Supreme Court by and large agreed with Court of Appeal’s application of the law. On the first issue, the Supreme Court concluded that the horns are a significant element of the RCD. On the second, the Court has left the arena open to debate somewhat and whilst it did not conclude that the absence of ornamentation was a feature of the RCD, it did agree with the Court of Appeal that it would be wrong to eliminate the decoration on the accused design entirely “because it significantly affects how the shape itself strikes the eye, and the overall impression it gives”.  On the third point, the Court of Appeal was right to conclude that the RCD claimed not merely a specific shape, but a shape in two contrasting colours. The Kiddee case wheels notably had the same colour wheels as the body of the suitcase.

As the Court of Appeal had correctly applied the law, the Supreme Court refrained from interfering with its decision of non-infringement, having assessed that the Kiddee case did not produce the same overall impression as the RCD.  

Comment: This is an important ruling in the area of registered designs which has helped clear up the uncertainty which has prevailed since the Court of Appeal disagreed with the High Court’s findings.

How design representations are interpreted, which in turn defines the scope of protection, means that designers will need to take great care when applying for protection for designs in future.  Attention is required to ensure that the broadest protection is achieved for a design as a whole and also for any features of that design with individual character. We will likely see designers filing a number of applications to protect individual products in future, in preference to relying on just one.  Unfortunately, for those who have already registered their designs using CAD images rather than simple line drawings, they may find that they do not in fact enjoy the scope of protection over the basic shape of their product that they might have presumed at the time of filing. Another concern in reaction to the judgment is that copycats may be able to escape infringement by adding distracting details on a  similar shaped product to give a different overall impression

It is clear that when seeking to obtain protection for shapes of products, the broadest design protection can be achieved by simple line drawings showing the contours of the design.  Photographs or CAD images may have the unwitting effect of narrowing the scope of protection given that a sense of surface texture and material can be conveyed via these media.   


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