Infringement rights case closed for original ride-on suitcase designer
After three years, the registered design rights litigation case has finally closed on Magmatic, the makers of children’s ride-on suitcase, Trunki.
Five Supreme Court Justices have ruled in favour of its competitor, PMS International, who offer a cheaper competing product that, although similar, is not identical.
Magmatic’s Trunki design was protected by community registered design (CRD), a process used to protect designs all across Europe.
The court case, a first of its kind to include illustrations in a written ruling, saw illustrations of Trunki’s original CRD 3D and 2D drawings. These had shading on the wheels and along the side of the suitcase, which was classed as a core part of the design but didn’t feature specific decoration.
The Supreme Court found that PMS International’s Kiddee Case clearly had a "number of features similar" to Trunki's CRD.
However, it ruled the appeal could not be based on the copying of an idea or invention, but purely on the design. The Kiddee Case had notable differences to the original copyright design, such as the use of graphics, colour and hooded wheel design.
The Court expressed sympathy for Magmatic. But this case highlights that businesses and designers have to be careful when submitting original invention designs so they accurately reflect what needs to be protected when they register their designs.
You can find full details of the judgement here.
What is intellectual property?
Intellectual Property (IP) is an umbrella term used to describe a range of legal rights that attach to certain types of information and ideas, and to their particular forms of expression.
Types of intellectual property rights
IP rights fall into two general categories:
These rights are granted on application to an official body, such as the UK Intellectual Property Office.
Registered rights are monopoly rights. This means that, once registered, the owner can stop others from using the right without permission.
- Trade marks
- Registered designs
These arise automatically, give protection against copying or using the right, and include:
- Unregistered trade marks
- Unregistered design rights
- Confidential information
Patents provide inventors with a legally protectable monopoly over their inventions. And they protect new and inventive technical features of products and processes.
They last for a limited period (20 years in most countries).
To qualify for patent protection, an invention must:
- Be new
- Involve an inventive step
- Be capable of industrial application
- Not be specifically excluded from protection (for example, methods of doing business)
To get a patent, it’s necessary to file an application for one, normally with the Patent Office of the country where the inventor works.
Patents can provide a high level of protection and are essential for some industries. For example, pharmaceuticals, where years of research and development are necessary to commercialise a new product.
However, patents are expensive to obtain and maintain.
They also involve public disclosure of technology, which could enable a competitor to develop a competing product without infringing the patent.
A trade mark is a sign or symbol used by a trader to distinguish its products or services from those of other traders. Like a brand name, company logo or packaging, for example.
A trade mark can also consist of the shapes of products or their packaging (for example, the Coca Cola bottle), and colours associated with a trading style (such as the Cadbury’s purple colour for chocolate) as well as sounds, smells and slogans. But it’s more difficult to register these marks.
A UK-registered trade mark is only enforceable in the UK, while a CTM is enforceable throughout the EU.
Both registrations last for ten years, but are renewable for further ten-year periods.
To be registrable, a trade mark must be:
- Capable of being represented graphically
- Capable of distinguishing goods or services
- Not excluded by law
Goodwill in an unregistered trade mark can be protected in an action for passing off.
However, an action for passing off can be both difficult to prove and expensive. It requires:
- Proof of a reputation in the mark
- A misrepresentation that could mislead the public
- Proof of damage (for example, financial loss or damage to goodwill)
Copyright protects original artistic, musical, dramatic and literary works (including computer programs), sound recordings, films, broadcasts and typographical arrangements of published works.
It arises automatically on the creation of the work and lasts for 70 years after the death of the author for artistic, musical, dramatic and literary works.
Sound recordings and broadcasts are protected for 50 years from the date of publication. On 1st November 2013, the period of copyright protection for sound recordings increased to 70 years.
Copyright doesn’t protect against the independent development of the same idea(s), only against the actual copying of another's work.
Ownership of copyright in a work will allow the owner to prevent unauthorised use of the work, such as:
- The making of copies
- Issuing copies to the public
Design rights protect the appearance of the whole or part of a product.
A registered design provides a legal monopoly.
As with registered trade marks, design owners can apply for a UK registered design or a Community Registered Design.
A registered design must be:
- Of individual character
- Not excluded by law
Protection lasts a maximum of 25 years, with registrations renewed every five years.
Design registration is relatively low-cost and is particularly appropriate for industries where design is instrumental in selling the product. Like fashion, for example.
An unregistered design gives a right against copying.
Protection is given at both the UK and EU level.
The EU right is broader in scope but only lasts for three years. Under the UK right, protection lasts for the lesser of 15 years from first recording or 10 years from first marketing.
It’s possible to protect sensitive business information through rights in confidential information (which covers know-how and trade secrets).
Although not strictly IP rights, they can protect sensitive information (both technical and commercial) and don’t need to be registered.
To be enforceable, the information must satisfy three tests:
- It must be confidential in nature
- It must have been imparted in circumstances in which an obligation of confidence arises
- Its unauthorised use would be to the detriment of the person imparting it
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