Trunki has been in the media recently for other reasons as it failed to enforce its EU registered design in the UK against the discount rival Kiddee case – even though the rival product was intended as a discount version of the Trunki product.
An EU registered design is an IP right that protects the appearance of the whole or part of a product, to the extent that the design is new and has individual character. In considering the scope of protection what matters is the overall impression produced by the design.
Trunki’s EU registered design consists of six CAD drawings with greyscale shading and grey/black colour contrasts. See below, alongside a sample view of the rival product.
On 9 March the UK Supreme Court dismissed Trunki’s appeal against a finding that its EU registered design was not infringed by the rival product. The Kiddee case did not infringe Trunki’s registered design because it made a different overall impression, namely an insect with antennae or an animal with ears. This was significantly different from the overall impression given by Trunki’s registered design, namely a horned animal. Furthermore, Trunki’s registered design was not a claim for the shape alone, but a shape in contrasting colours (appearing in black and grey in the drawings). While the Court sympathised with Trunki, noting the concept was original and clever, it said that design rights are there to protect designs and not ideas or inventions.
This decision against Trunki is a reality check about how far registered design protection goes in practice. It also underscores the importance of getting the graphic representation of the design right. In fact, it may be that the outcome for Trunki might have been different if simpler line drawings were used, instead of CAD drawings with shading and grey/black colour contrasts which appear to have restricted the scope of protection.
While this decision is based on its own facts, there are a number of important takeaway points from the decision that all design-led businesses need to know:
- Registered designs remain an important IP right, however the scope of protection can be fairly narrow, especially for mass market products or in crowded design space.
- Registered designs only protect visual appearance of a product, not the idea or concept underlying a product.
- Contrary to media reports, registered design infringement is not about comparing two products in the marketplace. It involves comparing the overall impression of the rival product with that of the design as registered. In other words, the registered design determines scope of protection, not the product itself or how it appears in the marketplace.
- Utmost care is now required when filing a registered design application, in particular how the graphic representation is prepared, to maximise scope of protection while maintaining validity. Applicants have choices about how to depict a design using line drawings, CAD drawings or photographs. Getting the graphic representation right is crucially important as this will define the scope of protection. Applicants also have choices about filing a multiple design application to maximise protection across graphical formats or visual appearances.
- It is likely that the scope of many existing EU registered designs is more restricted now than previously thought, particularly where graphic representation is based on CAD drawings with unnecessary tonal contrasts or based on photographs.
- Although this is a UK decision it relates to EU registered design law and has relevance for Ireland.
- Businesses and designers should take an overall approach and consider best options for IP protection to fit budget and commercial objectives. This means getting professional advice and considering all options whether based on trade marks, patents and copyright, as well as registered designs.
The Supreme Court judgement (PMS International Ltd v Magmatic Ltd [2016 ] UKSC 12) is here