The decision of the Supreme Court (SC) to uphold the Court of Appeal’s (CoA) earlier decision that the ride on children’s case sold by Kiddee did not infringe Magmatic’s Community Registered Design (the TRUNKI case) has been reflected as destroying the value of design registration. Nothing can be further from the truth. Rather, it is a timely reminder of the need to identify the key element of the design and consider how best to protect this.
It is true that Magmatic’s registered design rights did not prevent Kiddee allegedly “copying” the concept of the innovative TRUNKI case. However, that has never been the role of design law. Design registrations protect the appearance of the design of a product and nothing more. They do not protect the concept behind that design. Magmatic’s design had been registered using a CAD image which bore no surface pattern but showing a distinct tonal contrast between the wheels and the strap and the body of the case. The Kiddee cases had no such tonal contrast but they did have other surface patterns.
The innovation in Magmatic’s TRUNKI product almost certainly lay in the underlying concept: it is a ride-on child’s suitcase in the shape of an animal. Although design registrations were never intended to prevent a competitor from copying the underlying concept of a product it might have been possible to structure the protection such as to make it more likely that competitive products would have been caught in the net of the design registration.
The scope of protection depends on the extent to which the new design differs from what has gone before to be determined on the basis of the images or illustrations of the design submitted as part of the application. Therefore it is important to decide the precise design elements on which to concentrate and what images should be presented in support of the application to show these design elements to their best advantage. These images may be photographs, CADs, or line drawings, and may be presented in monochrome, grey scale or colour.
A number of important points fall to be addressed here. Firstly one must determine the importance that colour or surface decoration plays, and how if at all, these elements should be shown in the application. Secondly, especially when dealing with a 3D design, determine which views show the design to its best advantage. Thirdly consider whether it is necessary to focus attention on any particular elements, either by use of shading on the drawing or image; and fourthly decide whether any elements should be “disclaimed” (which can be done by use of broken lines). Lastly one must consider whether (and how) the central design might be ring-fenced by means of a number of design registrations based on that central theme.
To illustrate these points, CAD images had been used in registering Magmatic’s design, and these showed a distinct tonal contrast between the wheels and the strap and the body of the case. There had been no equivalent tonal contrast in the Kiddee Case. Therefore in the absence of any other plausible reason the CoA took the view (contrary to that of the High Court) that the RCD did not protect just the shape alone, but also the colour contrast between these features. The High Court had taken the view that the RCD had protected the shape alone and had not taken the colour contrast into account when comparing the designs. The SC commented that absence of surface decoration could, as a matter of principle, be a feature of a registered design, and whether it was in fact a feature of a particular registered design turned on the proper interpretation of the representations used in the registration.
Design registrations protect the appearance of a specific design. They do not protect the concept of the product. Therefore it is essential for designers (and their advisors) to consider all options and possible consequences very carefully when deciding what falls to be protected and how this is best achieved.
Eric is a former chair of the Joint Examination Board for entry on to the registers of trade mark attorneys and of patent attorneys, and moderated the Design and Copyright examinations for many years.
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