March 23, 2016

Company loses design rights case

Rob Law, the creator of the Trunki line of children’s ride-on suitcases, had launched legal action after claiming that a competitor [PMS] had infringed the product design.

Both companies sell a range of ride-on cases which are marketed at children and decorated to look like animals or insects.

The Supreme Court upheld an earlier decision by the Court of Appeal and so dismissed the claim for infringement of Community Registered Design (CRD).

The court held that the rival product Kiddee Cases does not infringe the CRD.

Whilst clearly imitating the concept of a child’s sit on trolley case, it didn’t create the same overall impression. In respect of those features of design protected by the CRD the defendant’s product was not a copy.

Following the case, Mr Law – who had won the support of a number of high-profile business figures – said he was “devastated” by the outcome.

He claimed that the judgment would create significant uncertainty for many other designers in the UK.

The case is of interest to IP lawyers as it asks the question of how a court should interpret computer generated design drawings used in registered design applications.

Was the CRD in respect of the shape of the Trunki alone? Or was it for the shape of the article, but including surface decoration, since none was shown on the drawings?

Unfortunately for the claimant the court found that the CRD did not include any decoration so the similarities in the two cases, beyond the animal horn handles did not amount to infringement.

Stephen Welfare, Royds Partner and head of the firm’s intellectual property unit, said: “The simple lesson for designers to learn from this judgment is that when submitting an application for a CRD be careful to include all elements of the design which you want to protect and which you believe give the design individual character whether CAD drawings or otherwise.”

For further advice on intellectual property law, please contact Stephen Welfare today.


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