UK designers are upping the ante over protecting intellectual property rights, says Stuart Whitwell.
Community Design Rights have come under scrutiny in recent weeks, as designers and entrepreneurs take a stand against conflicting Intellectual Property legislation to support the hard work of British designers against the threat from cheaper copy-cat products.In July 2013 the High Court presided over Magmatic Ltd. vs. PMS International Ltd. (PMS.) Magmatic owner, Rob Law designed and manufactured the Trunki, a ride-on suitcase for children. The idea was initially quashed on the BBC programme Dragon’s Den, but has gone on to be incredibly successful with a turnover of £7 million in 2013. When Mr Law discovered a rival product, the Kiddee Case, produced by PMS, he initiated legal proceedings, firmly believing the company were in breach of his Community Design Rights (CDR.) The products were noticeably similar in concept and design, resulting in PMS willingly conceding to certain points of the infringement case and reaffirmed by Judge Arnold J ruling in favour of Magmatic purely based on the shape of the Kiddee Case.
PMS repealed the 2013 decision, which led the Court of Appeals to re-examine the case last month, and ultimately overturn the initial ruling. The review considered the reasoning used for the preliminary judgement and found two major flaws in the interpretation of the CDR.
Judge Arnold J was found to have misinterpreted the protection provided by the Trunki CRD. Firstly he had failed to consider the overall impression created by the Trunki CRD in comparison to that of the Kiddee Case. Secondly, he overlooked the colour shading and decoration as notable features of distinction. The images present the Trunki CRD and the Kiddee Case. By directly comparing the two products, it becomes evident that the CRD provides the impression of a “horned animal” whilst the Kiddee Case is plainly a tiger with stripes and whiskers.
Judge Arnold J also neglected to consider the decorations and markings as a point of distinction on the Kiddee Case, due to the Trunki’s CRD being a monochrome computer-aided design. However the monochrome design does differentiate between the colour of the wheels from the main body of the case, which is not a feature found on the Kiddee Case. The Court of Appeals found that this was a feature of the computer-aided design that was filed, and therefore decoration should be taken into consideration when assessing the CRD. In order to simply register the shape, Magmantic should have filed line drawings, rather than the computer-aided design.
By stating that PMS were not in breach of the CRD has caused uproar in the design and creative industries. It implies that computer-aided CRD images do not provide adequate protection for designs unless every detail or variety is registered; in turn allowing others to create copy-cat versions simply by adding alternative surface decoration.
The images demonstrate how simple this would be to do, as the computer-aided design represents the Trunki, whilst the addition of stripes and whiskers as well as eyes, have transformed the Trunki design into what is now being sold as a Kiddee Case. Rob Law has commented on the legal ambiguity left by this most recent judgement, believing it is “impossible to register the infinite amount of all surface decorations applied to one shape.” With approximately 65 per cent of all CRD’s presented in a similar fashion, through computer-aided designs, the repercussion of such a case could severely impact the profitability of UK designers and inventors.
Trunki supporters and the #ProtectYourDesign campaign
The likes of Sir Terence Conran, founder of the furniture chain Habitat, and Grand Design presenter Kevin McCloud have spearheaded a social media campaign to alert designers of the importance of correctly protecting their designs. With such damaging re-examinations of design rights; inventors and designers must reassess the protection they have for their work, old and new. If the latest ruling stands it brings into question the protection granted by the European Design Registry, and leaves the door open for more discount copy-cat products flooding the market. Rob Law and a host of celebrity supports are urging the Supreme Court to re-examine the decision, hoping for a more favourable outcome in a fight to help designers across the UK protect their design rights.
Stuart Whitwell is joint managing director at Intangible Business