The case of two cases – how a long running legal saga will impact on IP law

News Article

The UK company behind Trunki ride-on suitcases for children has lost its battle in the Supreme Court in London, which dismissed its appeal over the design of Hong Kong rival Kiddee.

The ruling is seen as a blow to small creative businesses in Britain that rely on design rights and means that designers will need to take great care when applying for protection for designs in future.

In the long-running legal saga, Magmatic, the Bristol-based company behind Trunki, argued that Kiddee suitcases infringe its registered design rights. Kiddee are made by Hong Kong-based PMS International and, like Trunki cases, are decorated to look like animals.

Five Supreme Court justices unanimously ruled in favour of PMS this month. The case centred on the issue of whether surface decoration ought to be considered when deciding if design rights have been infringed.

Magmatic’s chief executive and founder, Rob Law, said the company was “devastated and bewildered” by this judgment. “We created an original product in Trunki and protected it by computer-generated registered design – a process used to protect a third of designs across Europe. In my honest opinion, the Trunki was wilfully ripped off.”

The legal battle has lasted several years and has cost the firm more than £500,000. Lord Neuberger, the court’s president, expressed “some regret” as the concept of the Trunki “seems to have been both original and clever.”

The judgment then stated: “It appears clear that Mr Beverley of PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design.”

Paul Beverley, the managing director of PMS, has openly admitted that he came up with the idea for Kiddee Cases after seeing Trunki luggage. He hailed the court decision as a “victory for fair competition.”

BJ Chong, a partner and intellectual property specialist at Palmers, commented: “Magmatic were, in effect attempting to exclude its competitor’s design from the market, on the basis of a single registered design. Given the differences in the designs, the court clearly felt that this was not enough to rule in their favour.

“However, the ruling is being seen as a blow for UK design and creative industries. It is a balancing act for the courts to promote fair competition whilst at the same time encouraging innovation and protecting intellectual property rights.

“The effect of this ruling may well be that other UK businesses may now see cheaper versions of their established, registered designs coming onto the market.”

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