The Supreme Court's recent decision in Trunki was unsurprisingly met with uproar in the design community, amid renewed calls for more to be done to protect innovative design in the UK. However, claims that the Trunki decision has plunged design protection into turmoil seem wide of the mark. In truth, whilst the outcome was undeniably unfortunate for Magmatic, nothing in the Trunki decision substantially undermines the value of existing RCDs or the importance of filing properly considered RCD portfolios for new products. Trunki largely reinforces what was already known about the potential pitfalls when implementing an effective design filing strategy.
Here are three observations in light of Trunki:
Registered Community designs (RCDs) can be enormously powerful IP rights. An RCD provides monopoly-style protection for both 2D and 3D designs throughout the whole of the EU for up to 25 years. It is inexpensive and very quick to register as it is not subject to any substantive examination. Nor is it limited to any particular type of goods or use. The price of these significant benefits is that the scope of protection drawn around an RCD is generally construed rather narrowly (although it can be widened if the evidence shows that there was significant design freedom and/or the design differed markedly from the design corpus).
The designer has the freedom to choose up to 7 different images of their designs to show the outside world what they are seeking to protect. These representations, and these alone, determine what is and what is not protected as part of that design. Great care should therefore be taken when choosing how and what to show in these images because this will affect the scope of protection which the designer enjoys. Consideration should be given to, amongst others, the kind of image used (photographs, greyscale CADs with or without tonal contrasts, or line drawings), whether to file in colour or with surface decoration, which views of a 3D design to show, whether certain elements should be disclaimed using broken lines, whether a thicket of RCDs should be filed around the central design, etc. Consideration should also be given to what the notional infringer is likely to copy. Whilst the designer has almost limitless freedom in how he represents his design, he is bound by what he decides to do. In Trunki, the CAD images used in the RCD showed a distinct tonal contrast between the wheels and the body of the case. It is quite possible that had there been no tonal contrast (which was seen to be a significant point of different to the Kiddee Case design), the outcome of the case might have been different. Put another way, a slightly broader RCD may well have caught the Kiddee case.
It is important to understand the limits of design law. Design registrations exist solely to protect the appearance of a specific design, not the type of product to which that design has been applied or its concept. Protection for a type of product or product concept may be available in limited circumstances under patent law and/or passing off, but not design law. Much of the frustration surrounding the Trunki decision was that design law had failed to prevent a competitor coming onto the market with the same type of product as the unarguably innovative Trunki suitcase. That is true, but it has never been the role of design law to prevent this kind of competition.
The Supreme Court upholds finding on non-infringement in long running Trunki case