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By Peter Leung
March 9 — Magmatic Ltd.'s registered design right for its Trunki children's suitcase was not infringed by a similar competing product, the Supreme Court of the United Kingdom ruled March 9.
The decision clarified the scope of protection of a registered design, with the court stressing that the purpose is to protect designs, not ideas.
Magmatic manufactures Trunkis, animal-shaped suitcases with wheels that children can ride on. It sued PMS International Group Plc., the manufacturer of a similar product called the Kiddee Case, claiming that the Kiddee Case infringed its Community Registered Design covering the Trunki. Magmatic appealed to the high court after the lower appeals court found no infringement.
The high court ruled that the Kiddee Case did not infringe Magmatic's registered design because the accused infringing product and the protected design do not make the same overall impression. First, Magmatic's design gives the overall impression of a horned animal, but the Kiddee Case does not, even though it has horn-like antennae.
Another reason the court gave is that Magmatic's registered design covers a shape with the main body and several components in contrasting colors. The Kiddee Case does not have this contrasting color scheme, which helps give its product a different overall impression.
Interestingly, the court opined on a non-binding basis that the absence of ornamentation can be a feature in a registered design. It said that Magmatic's registered design had an “elegant uncluttered appearance” in contrast to the Kiddee Cases, which often had markings on the sides. This difference also reinforced the finding that the two made different impressions.
The decision will likely raise concerns that industries relying on registered designs may have trouble protecting their products. However, one lawyer said that design patents are still valuable tools, and that the Supreme Court's decision provides guidance on how to protect them.
“With a little forethought, registered designs will remain highly effective ‘Keep off the grass’ signs to competitors,” Michael Moore, intellectual property partner at Marks & Clerk in London, said in an email statement. “To maximize protection, where possible, layers of registered design protection should be obtained. For example, this could mean a registered design to protect the product as a whole (e.g. with line drawings) and a separate design or designs to protect distinctive parts or features of the product.”
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