Blog | Safeguard IP | Intellectual property insurance experts

The erosion of design protection

I have written previously on how all companies no matter how large or small are at risk from IP litigation. One company that was forced to take legal action was Magmatic Ltd, better known as the manufacturer of Trunki, the ubiquitous ride-on children’s suitcase.

The business is a real British success story with the owner, Robert Law persevering against the odds to turn an idea into a multi million pound business. He even got rejected by the dragons along the way.

Unfortunately, as is the case with many successful ideas a competitor, PMS International Ltd sought to gain a commercial advantage by copying the Trunki design. The photographs below show the extent to which the products look the same. The first column reproduces Trunki’s Community Registered Design (CRD) as filed, the second column shows the Trunki suitcase itself and the third column reproduces pictures of PMS’s product, the Kidee Case.

Following launch of the Kidee Case, Magmatic took legal action to prevent further sales and to recover damages for infringement of its CDR. At trial the court heard how PMS had seen a gap in the market for a cheaper Trunki style suitcase and had even admitted that, to some extent at least, the Kidee Case had been inspired by Trunki.

CRDs protect any aspect of the appearance of the whole or part of a product resulting from its lines, contours, colour, shape or texture or the materials from which a product is made and at trial Trunki successfully argued that the Kidee Case infringed this right. In coming to his decision, the judge rightly followed previous case law and disregarded all decoration on the Kidee Case (which, as can be seen, was designed to look like a tiger as opposed to Trunki’s horned animal).

PMS promptly appealed and in an important judgement, the Court of Appeal overturned the judge’s findings. The Court of Appeal concluded that:

“it was wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives”

And that, when taking surface decoration into consideration the overall impression of the two designs was different. As a result, PMS were found to be non-infringing and Trunkie has been left with a sizeable legal bill and copycat manufacturers lining up to take advantage of the decision.

Unsurprisingly, this judgement has caused some disquiet amongst designers and IP practitioners. By relying on the decoration of the Kidee Case, the Court of Appeal seems to have altered the test for assessing infringement of such rights. Third parties could now be able to claim that subtle differences in surface decoration render CDR protection invalid which raises uncertainty about the scope of protection afforded by these rights.

Following the decision, Mr Law and other notable designers have begun a campaign to improve protection for UK designers. The campaign #protectyourdesign may take some time to bring about the desired change but is important. If you are a designer, we encourage you to support these efforts.

No company is immune from the threat of IP infringement.

What do Virgin, Karen Millen, Lush, Trunki, Interflora, The Bocabar in Bristol, the Glee Club and Dyson have in common?

They prove that, unfortunately, all companies whether large or small and regardless of what rights they own or industries they operate in cannot escape the threat of IP infringement.

Read more…

Government seeks to encourage IP insurance

Last year the government  published a report that is very close to our hearts.

Entitled ‘Banking on IP’ the report highlighted the fact that although we are in an age where most businesses have far more value tied up in assets such as IP than buildings and machinery lenders are still very reluctant to lend against this asset class. The result is that billions of pounds worth of business assets cannot be leveraged by business owners.

Read more…

Unlock hidden value in your business

A survey carried out by Imperial College in London on behalf of the UK Intellectual Property Office (UKIPO) has confirmed the importance of intangible assets such as IP to companies in the UK.

The study found that in 2011 investment in intangible assets in the UK was £137.5bn. In comparison investment in intangible assets reached just £89.8bn.

Read more…

Is your pitch safe?

I thought I would write a cautionary blog about a recent decision concerning the misuse of confidential information.

The case concerned two individuals, Brian Wade and Geraldine Perry who in 2009 pitched an idea for a new reality music show called The Real Deal to Sky. Instead of singers singing cover versions as in the X Factor, the Real Deal would feature the contestants singing their own compositions. Contestants were to be invited to the audition stage and whittled down to a winner who would receive a record contract. Another key idea was the songs being made available for download soon after being performed. During the pitch Wade and Perry provided Sky with a “deck” of PowerPoint slides which encapsulated their ideas. Despite the pitch being well received Sky rejected the idea.

Read more…