Children’s suitcase brand Trunki has lost its appeal against rival brand Kiddee, after the Supreme Court ruled that its design rights had not been infringed.
Trunki, owned by UK parent company Magmatic, and Kiddee, owned by Hong-Kong-based PMS International, are both suitcase brands that children can ride on, in the shape and style of animals.
Magmatic first sought damages against PMS International in 2013, alleging that Trunki’s design had been copied.
Based on surface decoration, rather than shape
It was found that there had been infringement of Trunki’s designs, but this decision was then overturned.
Magmatic then appealed to the Supreme Court, but this appeal has now been dismissed.
The court came to its decision based on the surface decoration of both products being different, rather than the similarity of shapes of the two designs.
The Supreme Court ruled that while it had “sympathy for Magmatic”, and “the idea of the Trunki case was a clever one”, that “Design Right is intended to protect designs not ideas”.
For “the discount market”
While it dismissed the appeal, it also said in its judgement that “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.”
Magmatic has been selling Trunki suitcases since 2004, after registering its designs in 2003.
PMS came up with the idea of Kiddee in 2013, as a “ride-on children’s suitcase for the discount market”.
“Uncertainty for designers”
Rob Law, founder at Trunki, says that the ruling brings a “huge wave of uncertainty to designers across Britain”.
“We created an original product in Trunki and protected it by computer generated registered design,” Law says. “This decision puts British designers at a distinct disadvantage from our European counterparts, whose courts have a far more robust approach to infringement.”
Consumer’s right to choose between products
But PMS International argues that Kiddee is filling a gap in the market by offering an alternative to its “expensive rival” Trunki, and that the ruling is a “victory for fair competition”.
Paul Beverley, founder at PMS International, says: “The court’s decision upholds the right of consumers to be able to choose competitively-priced products.”
He adds: “We are operating in very different markets from our rivals and we have never been competing for the same customer base.”
Scope of design registrations unclear
Georgie Collins, intellectual property specialist at law firm Irwin Mitchell, says: “This case shines the spotlight on the on-going battle between market-leading products borne out of creative design, and those who produce cheaper, competing products which are similar but not identical.”
“Today’s ruling will have far-reaching consequences for the design industry and will be seen as disastrous for those who have sought to protect their designs with Community Design Registrations, as the scope of protection is now called into question,” she says.
The case “creates confusion for designers”
Dids Macdonald, founder at ACID (Anti-Copying in Design), says that the organisation’s next steps will be to campaign to get “unfair competition” included within design infringement laws, which designers could fall back on if intellectual property laws fail them.
“The case has plunged design law into an abyss,” she says. “It has created confusion for designers. Why would someone bother registering designs, and spending £500,000 and a lot of time that could have been spent innovating?”
She adds: “If a company can use legal technicalities to produce remarkably similar lookalikes, it’s not worth registering designs in the first place.”
Macdonald suggests that designers “take serious advice” on the CAD drawings they submit for design registration. “What you submit is what you rely on, so you’ve got to make sure it’s right.”
“It’s very dispiriting, but we won’t stop here,” she adds. “We’re campaigning for clarity from registration authorities.”