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      Supreme Court ruling deals blow for UK design rights

      Published on 09 Mar 2016 | 2 min read

      Court finds in favour of firm accused by UK entrepreneur of design rights infringement. Ruling ‘cements perception’ that ‘pendulum swings too far in favour of alleged infringer’ and calls for UK designers to ‘urgently wake up’ to realities of intellectual property protection.

      The Supreme Court today (Wednesday 9 March 2016) announced its ruling in a landmark case that will have long-lasting implications for the application of design rights across the UK creative industries.

      Following a long-running battle, the Supreme Court has today found in favour of PMS International, ruling that the company’s ‘Kiddee’ case design does not represent an infringement of the registered design rights of Magmatic’s popular ‘Trunki’ cases.

      Bristol-based Magmatic, founded by former Dragon’s Den contestant Rob Law, had claimed the animal-themed design of Kiddee case luggage represented an infringement of its own design for the animal-themed Trunki case. Magmatic won a High Court judgment against PMS International in July 2013, which was subsequently overturned in March 2014 by the Court of Appeal, which ruled that the Kiddee case looked sufficiently different from the Trunki design.

      The Supreme Court hearing centred on the issue of whether surface decoration ought to be considered when deciding if infringement has occurred. Magmatic’s original registered design was for a particular shape and included no indication of the product’s surface aesthetic, unlike the more detailed Kiddee case product, which clearly showed surface markings. Today’s Supreme Court ruling echoes that of the Court of Appeal, arguing that Kiddee cases’ surface decoration is enough to prevent the case from creating the same ‘overall impression’ as the original Trunki design. The Supreme Court’s decision indicates that surface decoration is a major influencing factor in judging infringement.

       

      Commenting on today’s Supreme Court ruling, Arty Rajendra, an intellectual property expert and partner at law firm Rouse Legal, said:

      “The ruling is an undoubted blow for UK design and creative industries and leaves significant question marks over the future direction of design rights enforcement in this country.

      “The courts have to strike the right balance between incentivising innovation, while simultaneously promoting fair competition. Today’s ruling cements the growing perception that the pendulum swings too far in favour of the alleged infringer.

      “Entrepreneurs and designers will now understandably be nervous given these developments and the potential knock-on effects for UK innovation and growth are concerning.

      “UK designers need to urgently wake up to the realities of design right protection. The Supreme Court acknowledges that the Trunki concept was both original and clever but registered designs are intended to protect designs, not ideas. Poor quality registrations, often covering only one or two products in a range, accompanied by a handful of inadequate images, are an extremely common practice. 

      “Registering product designs in the UK and across the EU is easy and inexpensive, but it must be done thoroughly. If not, we can expect to see more market-leading UK success stories like Trunki continuing to lose out to follow-on competitors.”

       

      Registered designs are infringed if the later product creates the same ‘overall impression’ as a protected design. Though an objective test, this case has proven that two well-respected tribunals can easily come to completely different conclusions.

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      Rouse Editor
      Editor
      +44 20 7536 4100
      Rouse Editor
      Editor
      +44 20 7536 4100
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