“Copycat” branding — where a lesser known brand mimics the appearance or design of a more successful or well-known brand — is becoming more common. Copycat products will often undercut the better known brand on pricing, in order to attempt to access a piece of the market captured by that brand. Designers looking to use the law to protect their designs should take note of the recent decision of the UK Court of Appeal in Magmatic Ltd v PMS International Ltd. The case concerned allegations made by Magmatic of infringement of the design of its popular children’s suitcase, the Trunki, by PMS’s product, the Kiddee Case.
Magmatic registered the Trunki as a Community Registered Design or CRD. A CRD is used by designers in Europe to protect designs against infringement. A designer must apply for registration to the European Union’s Office for Harmonization in the Internal Market (OHIM). The design must meet certain conditions for registration, including a graphical representation depicting the features of the design. A CRD can protect any aspect of the appearance of the whole or part of a product, including its contours, colour, shape, texture or materials from which it is made. A design that qualifies as a CRD benefits from European-wide legal protection for 25 years.
The Court of Appeal in the Trunki case was required to compare the design of the Trunki against the unregistered Kiddee Case design. PMS admitted that they had created the Kiddee Case as a “discount version” of the Trunki. In a first-instance decision in the UK High Court, it was held that the design of the Kiddee Case did infringe the Trunki. PMS appealed this decision to the Court of Appeal. In reading its decision, the Court of Appeal made the following points about the scope of the CRD’s protection:
- A design will only be protected to the extent that it is depicted in the graphical representation in the CRD. Therefore, if a designer wishes certain colours, textures or other features to be protected by the CRD, these must be shown in the graphical representation.
- When comparing two competing designs, the comparison must take into account the overall visual impression of the designs — and, in the case of a registered design, this will include all the features that are depicted in the CRD. For example, an absence of ornamentation may, itself, be a feature of a design.
- If the graphical representation of a design is too limited (for example, a simple line drawing), the CRD may not be valid. However, if a graphical representation is overly-inclusive, the design may be more easily distinguishable from similar, competing designs and therefore the CRD’s protection may be less effective.
As a result of Magmatic’s sophisticated computer-generated graphical representation, the Court was able to afford protection to the shape of the Trunki suitcase, various contours that were depicted, as well as the contrasting colour between the body of the suitcase and its wheels and strap, despite the graphical representation being monochrome. Although this colour contrast was a feature, no specific colours were depicted, and therefore the Trunki’s protection was not limited to any particular colours.
The Court of Appeal compared the two designs from the perspective of an “informed user” of the products, who they decided would be a parent, carer or relative of a child. They assessed that the overall impression of the design of the Trunki was that it was a sleek and symmetrical design, which resembled a “horned animal”. Conversely, the design of the Kiddee Case was softer and more rounded and resembled, in one case, an insect with antennae and, in another case, an animal with floppy ears, due to its various features, including ornamentation on the sides and asymmetrical design.
The Court of Appeal concluded that the Trunki conveyed, on a general and detailed level a “very different impression” from that of the Kiddee Case – and therefore the Kiddee Case did not infringe the design of the Trunki. The decision is a useful reminder to designers seeking protection using a CRD that significant attention must be paid to the way that the design is graphically represented, in order to ensure that the law will afford protection to all aspects of the design and enable it to be distinguished from competing designs.
Media reports suggest that Magmatic will be taking this case to the UK’s Supreme Court. Covbrands will keep readers posted on developments.