This caused significant comment among observers since it seemed clearly to contradict earlier case law which says that where a protected design is for a shape (eg, when it has no surface decoration), surface decoration on an alleged infringement is to be ignored. While this is not a shock, (the Court of Appeal came to the same conclusion) it leaves product designers with a problem. It is a conclusion I would have reached with some regret, as the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever; as Arnold J said at para 16 of his judgment, “[t]here is no dispute that the Trunki was an innovative design” and it “has won numerous awards and has been a significant commercial success.

Although a design registered in black and white or in greyscale is not limited to any particular colour, the Trunki case reminds designers of the need to be very cautious when using greyscale to ensure that features that are not intended to be different colours are not represented in contrasting shades. We consider what this decision means for designers and what practical lessons can be learned from the Supreme Court’s ruling.Law, and therefore Trunki, had asked for legal protection under the Community Registered Design legislation, which only deals with designs. The appearance of the Trunki case is protected in the EU by a Registered Community Design (RCD) (and by certain elements of UK unregistered design law, to which related infringement proceedings had already been concluded).

Specific legal advice about your specific circumstances should always be sought separately before taking any action. The Supreme Court has recently heard the appeal of PMS International Ltd v Magmatic Ltd regarding whether PMS International’s “Kiddee Case” infringes Magmatic Ltd’s Community Registered Design (CRD) for its popular children’s ‘ride-on’ suitcase, the TRUNKI®. Magmatic’s chief executive and founder, Rob Law, said the company was “devastated and bewildered” by this judgment. The registration is based on a set of images of the Trunki that are shaded greyscale CAD drawings showing a strap, the wheels, and strips of the Trunki in a darker shade than the main body.The court of appeal said this created the impression of a horned animal, whereas the Kiddee case resembled an insect with antennae or an animal with floppy ears. By way of background, Magmatic had alleged that PMS' Kiddee Case products infringed the RCD (see images below), which protected its Trunki product. It is therefore important to ensure that the design registration applied for properly shows the important features or appearances of the product, as it is the drawings or images filed with the design application which exclusively identify the monopoly the designer is claiming. The case concerned a Community registered design (CRD) for the well-known Trunki ride-on childrens' suitcase.

However, since Magmatic’s CRD was was more sculpted and modern, it produced an overall impression which was different from the 1998 prototype, and thus met the validity threshold. However, on an obiter basis, the Supreme Court decided the point of principle that absence of ornamentation can be a feature of a CRD.Arty Rajendra, partner at law firm Rouse Legal, described the court ruling as an “undoubted blow for UK design and creative industries”. As the makers of Trunki have found to their cost, if the images of a design registration include unnecessary features then the resulting scope of protection may be unduly limited. The UK Intellectual Property Office (IPO) encourages people to use registered designs in the UK and recently held a consultation proposing to reduce the filing fees for registered designs in the UK. found that the correspondences between the two artworks were insufficient to amount to a reproduction of a substantial part of the Trunki artwork, although the Defendant was found to have infringed the Claimant's copyright in the Trunk safety notice.

Next, the 3D model could be included as a second design; it’s narrower than the first and so it’s more likely to be held valid. It is important that the images do not include unnecessary features, such as colour, shading or surface decoration. With carry handles, a tow strap, horn grips and secure internal straps, you can pack your favourite toys and clothes in the case, lock the catches and you are ready to go!View image in fullscreen Magmatic, the Bristol-based company behind the Trunki suitcases, above, argues that Kiddee case luggage infringes upon its registered design rights.