The court ruling that the famous Trunki ride-on suitcase has not been copied by a rival brings welcome clarity to design protection laws, say IP attorneys.
The Supreme Court ruled that a rival product to the Trunki, called the Kiddee Case, was different enough in appearance for Trunki maker Magmatic not to be able to prevent its sale.
The creator of the Trunki, Rob Law, has tweeted to say he is “devastated” with the ruling, adding: “The law is meant to be about certainty. But this decision will create chaos and confusion among Britain's design community".
A spokesman for the Chartered Institute of Patent Attorneys (CIPA) expressed great sympathy for Mr Law, but explained that the ruling was consistent with the current understanding of design law, and highlighted the important distinction between patents and registered designs.
Prof David Musker, Chair of CIPA’s Designs Committee, said: “Patents protect inventions, so are infringed by anyone who uses the same invention, whereas registered designs only protect what a product looks like. If a rival product is sufficiently visually different then the rights are not infringed.
“This case provides a very useful real life example to designers of how far registered design rights extend. The Trunki and the Kiddee Case have a similar overall design, but there are several important visual differences, and it is quite easy to tell the two products apart. Therefore, far from creating chaos and confusion, this ruling clarifies what kind of rights a registered design brings.”
In giving the ruling, Justice Lord Neuberger explained that while the Trunki was a good invention, which was copied in the Kiddee Case product, that was not the issue at hand. He said: “Unfortunately for Magmatic this appeal is not concerned with an idea or an invention, but with a design."
He added that the visual design of the Trunki was "significantly different from the impression made by the Kiddee Case”, and therefore Magmatic’s rights were not infringed.
Prof Musker expressed his sympathies for Mr Law and added: “As any air traveller with kids will tell you, the Trunki is a fantastic British design, and it deserves protection against imitators.
“However, this case concerned Registered Community Design protection, which does not protect against copying of ideas, but only against imitations that look similar.
“The Supreme Court decision makes it clear that designers can use the intellectual property protection system to get broad protection, but only if they take care in how they go about protecting their ideas and product designs at the outset.
“Our advice to any designer with a valuable idea is – don’t do it yourself; before you disclose your valuable ideas and designs to anyone, seek professional advice from someone qualified, trained and experienced at getting you the best protection possible.”