UK Supreme Court rules against Trunki

The UK Supreme Court has upheld a ruling that the Kiddee Case did not infringe a registered Community design (RCD) covering the award-winning Trunki case.

Lord Neuberger handed down a unanimous verdict today, March 9, stating that the English Court of Appeal correctly identified failures in Mr Justice Arnold’s assessment of the infringement claim filed by Magmatic, the owner of the RCD covering the Trunki.

Rob Law, inventor of the Trunki, said he was “devastated and bewildered by the judgment.” 

He added that the decision will “create chaos and confusion among Britain’s design community”.

The judges expressed sympathy for Law, describing the Trunki as “original and clever”, but affirmed the appeal court’s analysis that the ornamentation and colours on the Kiddee Case should be considered as part of the overall assessment of infringement.

“The effect of this analysis is that the court of appeal was right to hold that the design claimed in this case was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product,” Neuberger wrote.

Magmatic, the company that manufactures Trunki cases, first started selling the product in 2006.

Targeted at children, the animal-shaped product has an indent on the top and horns on the front, allowing a child to grip onto it and ride it.

In 2012, Essex-based PMS International Group started selling the Kiddee Case, a line of cases in the shape of insects and tigers.

Magmatic owns a RCD for the shape of the Trunki and sued PMS for infringement in 2013.

The English High Court sided with Magmatic in 2014 but the appeals court sided with PMS after it appealed against the ruling.

In today’s judgment Neuberger upheld the appeals court ruling, stating that the “appeal is not concerned with an idea or invention, but with a design”.

He added that there was no need for a referral to the Court of Justice of the European Union.

Paul Beverley, managing director at PMS, said the decision upholds the right of consumers to be able to choose competitively-priced products.

He added that the Kiddee Cases had been unfairly maligned as "pirates" and "copycats" during legal proceedings.

"We try always to work within the law and successive courts have agreed that there is no way our popular Kiddee Case can be mistaken for any other product. In reality, we are operating in very different markets from our rivals," Beverley concluded.

Guy Wilmot, a partner at law firm Russell-Cooke, said that today’s decision may “serve as a rude wake up call for many other creative businesses in Britain”.

“This ruling reminds businesses which rely on design rights that they are limited rights and cannot be used to protect general design concepts,” he added.

Angela Jack, associate at law firm EIP, said the case demonstrates the limitations of design rights, describing them as the “poor relation of the intellectual property family”.

She added that Magmatic could have potentially obtained a patent for the design, which would have extended its scope of protection.