13 Mar Trunki: A brief case report
Yesterday the UK Supreme Court decided (here) that a range of animal-themed ride-on suitcases (the Kiddee Case) do not infringe a Community Design Registration for the well-known Trunki suitcase. This decision was made despite the Kiddee Case being conceptually very similar to the Trunki and admitted to have been created as a low-cost alternative to it. What can we learn from this decision?
The right that was relied on to protect the Trunki is a European Community Design Registration. The registration is based on a set of images of the Trunki that are shaded greyscale CAD drawings showing a strap, the wheels, and strips of the Trunki in a darker shade than the main body. Due to the presence of these contrasting shades, the Supreme Court concluded that the registration was not “for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product.” This conclusion significantly limited the scope of the design registration and greatly contributed to the finding of non-infringement. It is possible that if the images of the design registration had been in a single shade of grey, or if black and white line drawings had been used, then the outcome would have been very different.
This shows the importance of carefully considering which images are used when filing an application for a design registration. It is important that the images do not include unnecessary features, such as colour, shading or surface decoration. As the makers of Trunki have found to their cost, if the images of a design registration include unnecessary features then the resulting scope of protection may be unduly limited.