What’s the difference between an animal with horns and an animal with ears? A cautionary tale of protecting original designs
Monday 21st March 2016
What’s the difference between an animal with horns and an animal with ears?
No, this isn’t the start of a bad joke and, if it was, Magmatic Ltd certainly wouldn’t be laughing.
The Supreme Court’s answer is…wait for it…that there is a significant difference between the two.
It is because of that difference that the Court found that a ride-on suitcase in the shape of an insect or an animal with ears, known as the “Kiddee Case”, did not infringe the Community Registered Design of a competing product in the shape of an animal with horns, known as the “Trunki.”
Trunki v Kiddee
Magmatic Ltd were the brains behind the Trunki design; a design that the Supreme Court noted was “both original and clever.”
In an attempt to protect its original and clever creation, Magmatic Ltd obtained Community Registered Design (CRD) protection for the Trunki design, using images taken from a 3D CAD programme.
The design of the Trunki was of a suit case which resembled an animal with horns. The wheels and straps of the product were in contrasting colour to its main body.
PMS International Group Plc (PMS) designed a competing ride-on suitcase, the Kiddee Case, in the shape of an insect or an animal with ears.
Horns vs Ears – Part 1
Magmatic alleged that PMS’ Kiddee Case infringed the CRD protection of the Trunki.
At first instance, the High Court found in favour of Magmatic; the CRD was valid and it had been infringed by the Kiddee Case.
Horns vs Ears – Part 2
PMS successfully appealed the High Court’s decision. The Court of Appeal found that the High Court had:
- Failed to take into account the difference in design of an animal with horns compared to a design of an animal or insect with ears or antennae, and the overall impression that was created by that difference;
- Failed to take into account the lack of decoration contained on the surface of the CRD;
- Failed to take into account the colour contrast in the CRD between the body of the suitcase and its wheels and straps.
The matter was referred to the Supreme Court.
Horns vs Ears – Part 3
The Supreme Court upheld the Court of Appeal decision that the Kiddee Case did not infringe the Trunki CRD.
It stated that, when determining whether there has been an infringement, you have to look at the overall impression created by a design.
The Supreme Court agreed with the Court of Appeal; the design of an animal with horns created a significantly different overall impression to the design of an animal or an insect with ears or antennae.
The surface decoration contained on the products should be taken into consideration when determining whether there had been an infringement.
It was said that the lack of ornamentation contained on the Trunki CRD reinforced the horned animal impression.
The contrast in colours of the Trunki design, which was grey in its design against the wheels and the straps which were black, should also have been taken into account.
It could be inferred that the components in black were intended to be in a contrasting colour to the body of the product. The Supreme Court found that the CRD is to protect not just the shape of the product, but the shape in two contrasting colours.
Comment
The case marks a battle, not just between animals with horns and those with ears, but between promoting competition and protecting innovative and original designs.
Many designers will feel that the Supreme Court’s judgment leans too far in favour of the former, reducing the incentive for designers to create innovative products on the basis that a competitor can produce a similar product and reap the rewards.
The case highlights the care that designers need to take when applying to protect designs of original products.
Designers may wish to submit a number of applications in order to protect their original ideas. When seeking CRD protection for the shape of the product, designers may also decide not to use contrasting colours, as this will potentially limit the overall impression that the design creates.
If you have an original design and want to know the best way of protecting it, then please contact Stephen McVey on 0113 227 0245 or at stephen.mcvey@gordonsllp.com.