Magmatic Ltd (“Magmatic”), the UK company which designed and sold the well-known “Trunki” ride-on suitcases for kids has lost its legal battle in the UK Supreme Court (the “Court”) against rival PMS International Ltd (“PMS”), a Hong Kong company behind the “Kiddee” cases.
Magmatic claimed that the “Kiddee” cases infringed its Community Registered Design (CRD) of their “Trunki” ride-on animal suitcases. Magmatic’s CRD was filed in two monochrome colours (as shown below).
PMS argued that the Magmatic’s “Trunki” suitcases gave an overall impression of a horned animal, whereas their “Kiddee” cases gave an overall impression of ‘an insect with antennae or an animal with ears’.
The Court ruled in favour of PMS and unanimously decided that the “Kiddee” cases did not infringe Magmatic’s CRD. The Court stated that Magmatic’s CRD was for a wheeled suitcase in the shape of a horned animal, with a strap, strips, wheels and spokes in a colour (or possibly colours) but not a claim for the shape alone. As such the colouring contrasts on the CRD and the allegedly infringing “Kiddee” cases represented a potentially significant difference. Also, the wheels and handles (i.e. horns) on the CRD stood out as features, whereas on the “Kiddee” case the wheels were largely covered.
Lord Neuberger in his judgment interestingly commented on the importance of good and detailed drawings in registered designs. He stated that applicants should make clear what is included and what is excluded in a registered design.
This decision is crucial for businesses and designers, as these parties now need to be more cautious when applying for registered design protection. Several UK IP Practitioners have also commented that it is now more likely that designers will file several design applications for a single product instead of relying on a single application, following the outcome of this decision by the Court.