Trunki infringement case dismissed; Ruling will have 'long lasting effect' on UK creatives

Robert Hutchins

By Robert Hutchins

March 10th 2016 at 2:30PM
UPDATED March 14th 2016 at 11:47AM
Trunki infringement case dismissed; Ruling will have 'long lasting effect' on UK creatives

Ruling has divided opinion among experts and presents a case that ‘will have long-lasting implications for the application of design rights’ for UK creatives.

Magmatic, the firm behind the popular Trunki case, has lost its court case against PMS International over a dispute about product design.

The Supreme Court has ruled against Magmatic who protested that PMS’ Kiddee Case range infringed upon its registered design rights at a hearing in November last year.

In what has been billed by many as a ‘landmark case’ among lawyers and designers alike, the ruling has divided opinion among experts and presents a case that ‘will have long-lasting implications for the application of design rights’ for UK creatives.

Trunki CEO and founder, Rob Law, said: “We are devastated and bewildered by this judgement, not just for ourselves but for the huge wave of uncertainty it brings to designers across Britain.”

The Bristol-based Magmatic had claimed that the animal-themed design of Kiddee case luggage represented an infringement of its own design for the animal-themed Trunki case.

The company won a High Court judgement against PMS International in July 2013, a ruling which was overturned in March 2014 by the Court of Appeal that declared that the Kiddee case looked ‘sufficiently different from the Trunki design.’

At the crux of the case was the issue of whether surface decoration ought to be considered when deciding if infringement has occurred.

The Supreme Court ruling echoed the Court of Appeal, arguing that Kiddee cases’ registered surface design prevented its own case from bearing ‘the same overall impression’ as the original Trunki case.

“A blow for UK design”

The case has now had multitude of law experts weigh in with what the impact on the UK’s creative industries will be following the decision, the thrust of which is that the ruling delivers ‘a blow to UK creatives’.

“The ruling is an undoubted blow for UK design and creative industries andleaves significant question marks over the future direction of design rights enforcement in this country,” said Arty Rajendra, an intellectual property expert and partner at law firm Rouse Legal.

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

The toy industry does not stand alone

The result of the Trunki case will not only affect the toy industry, but rather the UK wider creative industries, including electronics, fashion and more, according to law expert Michael Moore of Marks & Clerk Solicitors.

“There will be many within the design industry that will be disappointed with the Supreme Court’s decision today and conclude that designers are not adequately protected,” said Moore.

“However, the Courts need to strike a balance between fair protection and free competition.”

Registered Design is ‘limited protection’

Carl Steel, a partner at Ashfords LLP, said that the Trunki Supreme Court decision highlights the limited protection that a Registered Design gives its owner.

“Unless a competitor copies a design exactly, or almost so, they are unlikely to infringe the Registered Design,” he said.

“The Supreme Court has quite rightly declared that a Registered Design protects only the particular design of the product shown, not the mere idea behind the product.

“Designers will need to be even more careful and make sure they obtain the protection they want and expect to get.”

“We’re operating in different markets”

Meanwhile, Paul Beverley, founder and MD of PMS International has expressed his own joy at the Supreme Court ruling over the Trunki case, declaring that his company has always made every effort to work within the law.

“Successive courts have agreed that there is no way our popular Kiddee Case can be mistaken for any other product,” Said Beverley.

“In reality we are operating in very different markets from our rivals and we have never been competing for the same base.”