Posted by Stephen Welfare, Partner
The changing landscape of registered designs: how best to ensure protection
Magmatic, maker of the Trunki, known as both a Dragon’s Den reject and a great British success story, has lost the Court of Appeal battle to protect its registered design. But why has this happened, and what do product designers need to do to maximise their protection?
Flash quiz: If a manufacturer produces a design that looks similar to a registered design, which also performs the same function and the manufacturer admits to copying the design, are they infringing a registered design? Answer: No.
This was the Court of Appeal judgment in a real case: Hong Kong based PMS International Ltd did not infringe the registered design of “Trunki”, created by Magmatic Ltd, when it copied its children’s suitcase design. And yet both the suitcases are in the shape of animals and are on wheels, created to allow the children to be pushed while sitting on their luggage.
How is this judgment possible?
This case hinges on ‘overall impression’. A registered design gives the owner of it the “exclusive right to use the design and any design which does not produce on the informed user a different overall impression”. So if a competing designer creates a design which produces a different overall impression to a registered design, that design will not breach the registered design.
Consider these images:
The crux of PMS’ argument was that if Magmatic’s registered design (Image 1) created a different overall impression to an unregistered design created prior to it by Magmatic (Image 2), which Magmatic needed to do in order to ensure registration, then the potential infringing design (Image 3) would have also created a different overall impression to the registered design. Magmatic, creator of Trunki, won the case at first instance but on appeal the Judge found in favour of PMS.
The decision was reached on the premise that the ‘overall impression’ between image 1 and 3 was different. The two main arguments given were that (1) The colour contrasts were different and (2) The surface of the registered design is slicker and is clearly a different animal.
Looking at the colour contrasts, the Judge’s point here was the contrast between the body of the animal and the wheels and the strap, something Image 3 does not do, as it uses the same colour all over. This argument emphasises that subtle differences in colour contrasts should be registered.
With regards to the reasoning behind the surface differences it would appear that the matter is one of interpretation, as the designs are clearly very similar and as PMS intended them to be.
What does this mean for registered designs?
The decision in this case has not been without critique as it feels wrong that the court would rule in favour of a company which admits to intending to produce a cheaper copycat product; the concept of protection is to protect a designer from copycat products.
There are nevertheless messages of note for designers as businesses who should ensure they maximise their protection through registration of any subtleties of a design; this will include any incremental differences between different products, different surface models and a range of colour alternatives.
Finally, there are however changes afoot in the design world as the Intellectual Property Bill – which is currently going through Parliament – contains provisions that it will be a criminal offence for deliberate copying of registered designs. The intent of this is that it will strengthen the protection given to owners of registered designs.
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