The UK Company Magmatic who designed Trunki ride-on suitcases for children has lost its battle in the Supreme Court in London, which dismissed its appeal over the design of Hong Kong rival company Kiddee.

The Supreme Court has ruled that a registered design strictly protects the shape of the item shown on the application form. It does not protect the method or principle behind that item. The decision represents the final step in a three-year dispute against PMS International as to whether their “Kiddee case” infringed Magmatic’s design rights in the Trunki case.  This means the design registration for the Trunki only covered the actual animal shape that was shown in the application – it did not give its owners any right to claim a monopoly in any ride-on children's luggage in the shape of any animal. 

Magmatic registered its designs for Trunki in 2003, while PMS came up with Kiddee in 2013 as a model for the discount market.

The five judges found that the overall impression of the two sets of cases were “significantly different” as the Trunki cases were animals with horns, whilst the Kiddee Cases were insects with antennae or animals with ears.

Magmatic’s chief executive and founder, Rob Law, stated the company was “devastated and bewildered” by this decision. “We created an original product in Trunki and protected it by computer-generated registered design – a process used to protect a third of designs across Europe. In my honest opinion, the Trunki was wilfully ripped off.”

The legal battle has lasted many years and has cost the firm more than £500,000 in fees.

Lawyers and many intellectual property specialists said the ruling was an enormous blow to small creative businesses in the UK that rely on design rights. It’s important that designers take great care when applying for protection for designs in future.

The good news (for new applicants) is that (coincidentally) the designs registry is proposing to change its fee structure so that "multiple" design applications (i.e. applications that include lots of different designs in them but all filed in one hit on the same day) cost very much less than they used to.  Whereas a single design used to be £60 and each design after than was £40, it will now be £50 for the first one or £70 to file ten, or £90 to file twenty, and so on.  (Our service charge applies on top of that).  So the response to the Trunki case has to be to get really creative with the design filing – pick out all the little bits of the design that are original and present each as a separate additional design in its own right, rather than just file the overall design.  This is going to be where professional help with the filing will really make a difference.

Sadly, we don't have an implementation date for the new designs fees yet.

For confidential, professional advice regarding Design Protection, Trademarks or Patents please contact our IP experts on 01494 422626 or email info@downing-ip.com