A Supreme Court ruling against a company based in Bristol has prompted the UK Intellectual Property Office (IPO) to update its guidance for designers.

The case in question started in 2013 when Magmatic Limited (Magmatic), the company which produces the Trunki animal-styled ride-on suitcases for children, sued PMS International Group plc (PMS) for infringement of its European Community design registration.  The English High Court initially found for Magmatic, but an appeal by PMS was upheld by the Court of Appeal.  The Supreme Court unanimously upheld the Court of Appeal’s decision that PMS did not infringe the registered design.

Trunki Inventor ‘bewildered’ by Decision

Rob Law created the Trunki case and is CEO of Magmatic.  He registered the design of the Trunki suitcase in 2003, and began selling them in 2006 – more than two million cases have since been sold worldwide.  In 2012, PMS began selling similar Kiddee cases.

In the Supreme Court’s judgment, Lord Neuberger said that he agreed the Trunki design was “both original and clever” and that it seemed clear that PMS had devised their Kiddee case after seeing the Trunki case.  But the question before him was concerned with design, not invention, and the design of the PMS Kiddee case was sufficiently different from the Trunki case to not infringe the design registration concerned.  Rob Law said he was “devastated and bewildered” by the Supreme Court’s judgment, and that it would “create chaos and confusion among Britain’s design community”.

IPO Design Guidance Update

Following the Supreme Court’s ruling, which was handed down on 9 March 2016, the IPO has decided to update its guidance for designers.  This is according to Rosa Wilkinson, the IPO’s Director of Innovation, who tweeted: “IP press is abuzz with Trunki case outcome.  @The_IPO will update its guidance for UK designers to reflect judgment.”

Professional Advice from SH&P

At Stevens Hewlett & Perkins we have a team of experienced attorneys who can advise you on the best way to secure protection for your invention.  We treat every case individually, finding out what you and your business want to achieve and then advising accordingly.  Our advice covers patents, trade marks and designs; both in the UK and overseas.  Your initial consultation with us is completely free, so why not make an appointment today?