The ongoing dispute about registered design right protection concerning Trunki has reached the end of the road. But it is not all doom and gloom for designers who register designs.

Trunki, the innovative children’s ride-on suitcase, has lost its final appeal for infringement of its Community registered design by a discount version from PMS International.

From Left to right: (1) The Trunki registered design, (2) an example of a Trunki and (3) the PMS kiddee Case

At first glance the Supreme Court’s judgement looks like a major blow for design law protection: a key British design success story has been denied legal protection to prevent sales of what it considered were copies. However, the judgement rests on the registered design itself and gives some very useful guidance for how you can bolster protection for registered designs in the future.

The most controversial aspect of the Supreme Court decision concerned the impact of ornamentation or other surface decoration (including a lack of decoration) on both the registered design and the alleged infringement.  The Supreme Court considered that an absence of decoration could be a feature of the registered design but also (and controversially) that the surface decoration on an alleged infringement could be taken into account by a court when considering the question of infringement.  These comments could apply even where the design is for the shape alone and not for other design features such as colour.

What have we learned?

a)     Filing in black and white still offers protection in all colours but if there are significant colour contrasts or shading in that image then those contrasts or shading will be considered to be a feature of the design.
b)    An absence of decoration on a registered design could be a design feature which is great for minimalist designers but could narrow the scope of some designs, particularly those registered as CAD drawings.
c)     In some circumstances prominent surface decoration on the article facing the allegation of infringement may result in it being non infringing.

One way in which Trunki could have avoided the issue would have been to file a number of different designs to cover different design features of its product.  For example, it could have filed a simple line drawing for the shape, another for any distinctive colour contrasts and surface decoration and another as a photograph to show the texture.

Why file a registered design?

Registered designs remain a very versatile and powerful right in your IP armoury.

Their main advantages are:

1.     They cover the entire European Union.
2.     You have a year from first disclosure to identify whether the product is a big seller and apply for registered design protection.
3.     They can cover a very wide range of things including fabric texture, colour contrasts, shapes, patterns and even logos.
4.     They are not restricted to particular goods and services so can be used to stop a wide range of infringing uses.
5.     They are cheap and are granted very quickly.
6.     You can cover particular features which are clever or innovative without necessarily having to register the entire product.  For example, a clasp on a handbag or a pattern on a dress.

If you have any concerns about your existing design portfolio or want to get registered design protection, get in touch for a free initial chat with one of our experts in registered designs.

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