Judges tougher than dragons

Fans of the comedy film “Four Lions” may recall the tense debate between members of police and security forces over “is a Wookie, a bear?”

These were echoed when the UK’s highest court solemnly debated whether a sit-on wheeled suitcase for children more closely resembled “a horned animal” or “an insect with antennae” or “an animal with ears”.

Furthermore, they gave consideration as to what impact the absence of surface decoration in a Community Registered Design has when considering the distinctiveness of a design as a whole.

Inventor Rob Law was unsuccessful in his attempt to prevent a competitor importing a cheaper alternative of his Trunki ride-on children’s suitcase, when the UK’s highest court held that his community design rights had not been infringed by a competitor’s “Kiddee” case (Magmatic Limited v. PMS International Limited). The Trunki design was famously rubbished as an idea by the television dragons but then was fantastically successful, capturing the imagination of travelling children and their parents and putting the Bristol based company on the map. Success bred imitators, including the “Kiddee” case produced by the defendant in this case.

Lord Neuberger noted: “Simplicity or minimalism can notoriously be an aspect of a design, and it would be very curious if a design registration system did not cater for it.” He also observed “A line drawing is much more likely to be interpreted as not including ornamentation than a CAD image.”

In considering the original design registration, stress was placed not merely on the absence of ornamentation but on the use of contrasting colours for the wheels and strap (black not grey). Contrasting colours were therefore seen as a specific feature of the design.

Lord Neuberger acknowledged that “The concept of the Trunki, a ride-on, wheeled case which looks like an animal, seems to have been both original and clever.” However, he pointed out that this was not a claim about ideas or inventions – those are covered by patents, and this was a design case.

The Supreme Court found for the defendants, holding that their Kiddee Case did not infringe Trunki and declined an appeal to the European Court.

The clear moral for designers is to make sure that the designs which they register reflect what they are proposing to sell. The court noted that since designs are deliberately intended to be both cheap and easy to obtain for qualifying products, people should file for all the variants they are looking for; if they plan that a design will include surface decoration they should show it in the design they put forward for registration. They should also NOT include features (like the contrasting colour wheels in this case) unless they intend these to be treated as a significant feature of the products as sold.

People who saw the carefully chosen photographs that have been in the media should realise that the judges were actually looking at six black and white computer-generated drawings that were submitted with the original design application, when they made their ruling.

There are a lot of lessons to be learned from this case for anyone entering the complex world of intellectual property rights.

First, it demonstrates how important it is for every would-be entrepreneur to consider, as early as possible, which intellectual property rights might apply to their products and to seek protection accordingly. Different rights protect different aspects of a product, and it’s worth exploring every single form of protection and securing all that apply.

The Supreme Court seems to have considered Trunki’s owner was seeking to use a Community Registered Design (which applies across the EU) to secure the sort of protection which only a patent provides. Furthermore, they noted that the design which was registered looked much plainer than the Trunki designs on sale, since it was registered without any surface decoration or ornaments. It might have been safer for Trunki to apply for a separate design for each separate Trunki model, including registering specific insect and animal designs.

Applying for patents can be expensive and, because they go through a prolonged period of pre-examination, they can be slow and difficult to obtain. They only protect novel ideas, but they protect them even against people who implement variants of them. Since seed-corn money is always tight in start up businesses, many businesses opt for registering designs (which is far cheaper and simpler), hoping the protection will be adequate if copycat products hit the market. Alternatively, inventors may attempt several early products along similar lines until they hit the model that achieves commercial success. Unfortunately, unless they went to the expense of applying to patent the first of the unsuccessful models, it’s possible that subsequent models will not be considered sufficiently inventive to obtain patent protection. The previous unsuccessful models will form part of the “prior art” which will be taken into account when judging patentability.

Susan Hall, a partner in the Intellectual Property Team said: “The recent Supreme Court case of Magmatic v. PMS International (otherwise known as the Trunki case) shows the importance for inventors and entrepreneurs of considering exactly which intellectual property rights they need to protect their products. Different rights protect different aspects of a product, and this case shows that trying to rely on a design to do the work of a patent will not work.”