Registration won’t protect the idea behind a design

Trunki losing its case has brought registered designs into the media spotlight. Picture: Creative Commons
Trunki losing its case has brought registered designs into the media spotlight. Picture: Creative Commons
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Design registration will become tighter following the loss of the Trunki case, writes Alison Marshall

The news of Trunki losing its case to defend its animal-shaped suitcases has brought the rarely litigated topic of registered designs into the media spotlight. This is a lesser-known intellectual property right which relates to principally aesthetic designs.

You may be more familiar with terms like patents, trade marks, and copyright, but registered designs are of great importance in design industries. Simply put, a novel design can be registered for a period of up to 25 years. This gives a monopoly over that design for that period and protects against others using a design with a similar overall impression to the registered design.

In the case of Trunki, the design right owners have made a very successful business from selling ride-on suitcases for children which are decorated with animal designs.

They have registered their designs and sought to enforce the protection that comes with such registration. The alleged infringer admits to seeing the Trunki cases and designing a lower cost version under the brand of Kiddee. However, infringement of registered designs isn’t necessarily about copying (unlike copyright) and registration doesn’t protect the idea or concept behind the design (only patents do that).

Therefore, due to the very small differences in design, the court felt that the Kiddee suitcases were not similar enough in their overall impression to the registration and therefore did not infringe the Trunki design.

This case has made the news because it was unexpected and controversial. Designers did not expect the concept of an animal suitcase to be protected (it wasn’t a registered patent after all), but they did have a different expectation on how dissimilar an item had to be to avoid infringement. It raises concerns over just how much protection existing registered designs actually provide. Designers may change their registration practices going forward, but the position for existing registrations and ongoing infringements is now uncertain for many.

One side reports this as a massive blow for the design and creative industries, while the other declares a victory for fairer competition. And that’s the real crux of the matter. Intellectual property is one of many areas of law in which maintaining some sort of balance is paramount. One of the key principles is that we should incentivise our creative people to create things, while impeding free trade as little as possible to achieve that. This issue comes starkly into focus in sectors like the pharmaceutical industry – how strong would drug discovery be without patents?

When interpreting laws like these, the courts will often nudge the balance slightly one way or another to correct an imbalance or address a new scenario. However, they are only supposed to interpret the law and should leave any significant changes to the elected legislature (although the boundaries of this rule are often tested).

Importantly, the courts also put flesh on the bones of legislation through their interpretation of the law when deciding cases. In the Trunki case, they are providing a detailed level of interpretation on a relatively untested area of law. Therefore, although it might be slightly different from what people expected, they are still effectively “putting flesh on the bones” of this relatively new area of law.

The reported worry for the design industry is that cheaper, but only very slightly different, versions of many registered designs will now proliferate without effective recourse. However, will designers be disincentivised as a result of this ruling? If not, then it seems the balance has not been nudged too far.

It is expected that designers will now register their designs in a different way: in particular, general shape designs are likely to have less detail. We might also see multiple registrations in relation to designs which have various iterations. This might result in slightly increased costs for registrations, but that is unlikely to disincentivise most designers in any significant way for future designs. However, the value and robustness of existing registered designs may be a different matter.

• Alison Marshall is a partner with CCW Business Lawyers

Ref: PMS International Group Plc v Magmatic Limited [2016] UKSC 12


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