A few days ago we saw the final chapter in the long-running and high-profile dispute between the owner of the registered design of the “Trunki”, a ride-on suitcase for children, and the company selling a similar product called the “Kiddee Case” which had been inspired by the Trunki.
In 2013, the UK High Court held that the registered design had been infringed, but the Court of Appeal thought otherwise and held that there was no infringement. The matter was appealed to the Supreme Court.
While the Supreme Court had sympathy for those behind the Trunki because it was original and clever, it clarified that Trunki’s registered design gave a narrow scope of protection and ruled that the Kiddee Case did not infringe the design because it produced a different overall impression.
Many thousands of companies, large and small, from electronics manufacturers to fashion houses and furniture designers, own registered designs which prevent competitors from designing a product with the same overall impression. What implication does this ruling have for businesses that rely on registered designs?
Although many will be disappointed by the Supreme Court’s decision, all is not lost for the registered design – far from it. It remains a valuable and effective intellectual property right that can protect the look and feel of a product or part of a product for up to 25 years. The application procedure for a registered design is relatively straightforward and cheap. The key is deciding what aspects of a design to protect and how best to protect them.
In this case, only one design was registered for the Trunki and that was for the shape of a horned animal as a whole. Designers need to consider at an early stage in the design process applying for multiple registered designs in order to maximise protection for their design. These registrations could cover not just the design as a whole but a variety of embodiments of it and also distinctive parts or features of the design.
Another important point for designers to bear in mind is that the registered design for the Trunki was created using computer-aided design (CAD) which included colour contrasts between different parts of the design. This two-tone colour detail narrowed the scope of the right. Designers could consider using simple line drawings as an alternative to a CAD to keep the registration as broad as possible.
There are useful lessons to be learnt from this important case which ultimately will assist designers when considering applying for a registered design. Designers should also remember that registered designs are just one of the intellectual property rights that can protect a product design – unregistered designs and copyright can also provide useful protection.