Design law is based on the “overall impression” created by a particular design.
Trunki’s registered design consisted of six monochrome images of the product taken from different angles.
Magmatic argued that since its registered design didn’t show any surface decoration, the prominent markings on the Kiddee case shouldn’t be taken into account when assessing the similarities between the two designs.
At first instance, the High Court sided with Magmatic: the correct comparison was between Magmatic’s registered design and the Kiddee case minus any surface decoration.
After a spate of recent high profile rulings of non-infringement (such as the Apple/Samsung tablet dispute or Dyson’s battle against the Chinese ‘Vax’), the decision was welcomed by many small creative businesses reliant upon design rights.
However, the Court of Appeal overturned the High Court’s decision, holding that there were aspects of surface design present in Magmatic’s registered design – even though the images were in black and white, the contrast in shading indicated the use of different colours for various parts of the design.
This meant that the prominent surface markings of the Kiddee case were relevant to the assessment of the overall impression created by the two designs.
Upholding the Court of Appeal’s decision, the Supreme Court yesterday ruled that while the Kiddee case had a number of features similar to the Trunki registered design, it also differed in notable respects.
It’s not the first time the issue of the extent to which labels, logos and other surface decoration should be taken into account when assessing design right infringement has cropped up, and it won’t be the last.
This case reinforces the principle that the scope of protection offered by a registered design comes down to the representations used to depict it in the application.
Trunki favoured six monochrome images showing the shape of the design from various angles. The advantage of this approach is that the design is not restricted to any particular colour.
However, Trunki’s undoing was that the monochrome images showed a clear colour distinction between various components. Had Magmatic avoided this contrast in the registered designs, the Court may not have taken into account the different impression created by the Kiddee case’s surface decoration.
It doesn’t necessarily mean that bland is always better; for example, a simple black and white line drawing would offer very broad protection to the shape of the design, but might not capture the full range of features that make the design distinctive.
It’s worth remembering that more than one set of drawings can be filed for relatively little additional expense.
Careful thought should be given to creating a design portfolio that captures various aspects of the design at different levels of generality.
Here at Woodfines, we have the expertise to help you navigate these difficult waters, and come up with the best, most cost-effective solution available. We’ll also be straight with you about the risks involved with any solution before you spend too much time, or money, on it.
For further help or advice, please get in touch with a member of our Company Commercial team.
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