Designs: It’s not time to pack your suitcase and leave, just yet article banner image

The UK design and creative industries have been waiting with baited breath for the court’s decision in the Magmatic (Trunki) case. This case revolved around apparent design protection for the well known children’s ride on suitcase brand, Trunki.

The press will report and many will see the case as a damning blow for the design registration system. In reality, the design system remains a robust system which can give businesses powerful monopoly rights.This case is an example of how failing to look after your intellectual property in the early days of a business can have significant implications.

The first thing to note is that the design registration system protects the appearance of an item. Not the concept behind an item, how it works or its function – protections of that nature, if they can be achieved at all, are protected through the patent regime. So, the current case is concerned with whether the contested products looked alike – not if they had the same function, were based on the same ideas etc.

Next, it is important to appreciate that a design registration protects the appearance of the design as it is shown in the filing, not the real world item itself. The visual representation of an item used when seeking protection is therefore very important. Sadly, in this case, it appears that the image filed with the registry lacked certain design features which would later become synonymous with the brand. This use of a less than ideal image would cause trouble for the applicant later. The courts would compare the images of the registered design with the alleged infringing product and note considerable differences between the two.

Thirdly, timing is everything. Businesses have a 12 month grace period from the time they make their design public in which to seek protection. They must also ensure that, as future design iterations are released, they seek protection for those iterations. In the current case, the first version of the product was released to the public in 1998 but the first application to register the design was not made until 2003.

It appears that the key concepts summarised above were not adhered to in this case. As a result, we are left with a decision from the courts which many in the creative industries were not expecting, but is legally unsurprising. This decision should act as a reminder that design registrations are powerful rights, but like any IP rights they are only effective if properly filed and managed.

 

Key lessons:

1.       Remember what design registrations do – they protect the appearance of a product, not its concept or how it works;

2.       It is crucial that the representations of a design filed with the Registry accurately depict the item to be protected in such a way as to create the broadest possible (but enforceable) monopoly;

3.       Timing is key; get your applications as soon as possible.

 

Ben Travers is partner and the head of the IP and IT team. If you would like to contact Ben then please call 01392 210700 or email ip.it@stephens-scown.co.uk.