Magmatic, the Bristol-based company behind Trunki, won a High Court judgement in July 2013 against PMS International for infringing the European Community Registered Design (CRD) of Magmatic’s Trunki suitcase with PMS’s Kiddee Case. The judgement was overturned by Lord Justice Kitchin last week.
However, Magmatic believes the finding is flawed and intends to appeal the decision to the Supreme Court and the Court of Justice of the European Union. It argues that the impact of this decision would not only affect its own business but also jeopardises millions of existing European registered designs relied upon by small companies to protect the shape of novel products into which they’ve heavily invested. The Court of Appeal decided that, in assessing whether one design gave the same “overall impression” as another, the surface decoration used on the Kiddee Case was relevant.
Rob Law of Magmatic said: “This decision is problematic on many levels. In theory it means design registration for a shape can be overcome simply by adding surface decoration – like a print, pattern or marking. It’s impossible to register the infinite amount of all surface decorations applied to one shape and this decision makes it extremely unclear what protection is granted by the European Design Registry, the body which grants registered rights in product shapes. This is not just a fight for our ride-on suitcase, but one which will have practical implications for all creative industries today, putting thousands of British businesses under threat. We’re proud to design and manufacture our products in this country and expect them to be protected by our legal system. By taking this decision to a higher court, we are determined to overturn this decision on behalf of all responsible businesses across Europe.”
The Court decided a feature of the Trunki cases was “horns”, and that the failure to include horns in the Kiddee Case contributed significantly to the judgment that the two cases gave a different overall impression. The decision does not change the previous ruling that Hong Kong-based PMS International had intentionally copied certain features of the Trunki, for which the court ruled it must pay Magmatic compensation.
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