Victory for Kiddee
A unanimous decision found that PMS International’s Kiddee suitcase does not infringe on the EU registered design of Magmatic’s Trunki ride on suitcase.
Despite noting the “original and clever” design of the Trunki product, the decision reaffirmed the earlier decision by the Court of Appeal that stated the difference between the surface decoration. This decision has important implications for many designers who rely on community registered design (CRD) that may only cover the dimensions and lines, without regards to surface decoration.
Michael Conway, trademark attorney at European IP firm, Haseltine Lake, said, “The judgment confirms that registered design law does not protect an idea or invention, but only the specific design as shown in the drawings of the registration. The scope of protection varies depending on whether the drawings are, for example, simple line drawings or 3D computer assisted design (CAD) drawings which show features other than shape, such as contrasting shading or colour.”
Jeremy Blum, trademark expert working with brands such as Diageo, Karen Millen, Daniel Wellington, said, “Before this decision, it might have been more likely rights holders would dismiss surface decoration on an accused product if their CRD had none. Now, in the right context, decoration must be taken into account if it significantly affects how the shape itself strikes the eye."
Conway adds, “Design-focused companies should review their IP protection strategy in light of the judgment and ensure they are putting the design registration system to best use within the overall context of their business.”