The justices unanimously dismissed the Trunki suitcase appeal
IP lawyers will be busy today mulling over the Supreme Court ruling against the company behind the popular Trunki ride-on suitcase.
The case — which has become known as Trunki v Kiddee — was born out of a long running and well-publicised legal battle between two rival children’s suitcase companies.
The dispute was this: the Bristol-based appellant is the manufacturer of Trunki children’s suitcases. The company has a community registered design (CRD) to legally protect the design of this suitcase, though this CRD does not include any surface decoration. The respondent — a Hong Kong competitor — makes Kiddee children’s suitcases that are decorated to look like animals or insects. Counsel for the appellant, Michael Hicks and Jonathan Moss, argued the respondent company’s product was strikingly similar to the Trunki, and this amounted to an infringement of the CRD.
It seemed like a simple dispute, but the law proved to be a sticking point for the judiciary. The question that the justices — including two of the most “celebrity” judges on the bench, lords Neuberger and Sumption — had to consider was how significant it was that the graphical representation of the CRD showed no surface decoration.
This tricky technical question has managed to spur on a bumpy two-year ride through the court system, finally reaching the country’s highest court in November. Footage from the hearing shows unwittingly brilliant stills of the five justices taking a look at the suitcases in the courtroom.
They clearly paid close attention: in the only substantive judgment given, Neuberger made a number of comments about the product’s design, like whether the “antennae and ears of the Kiddee Case” look “horn-like”.
Ultimately, the justices unanimously sided with the respondent — who was represented by Mark Vanhegan QC and Chris Aikens — and dismissed the appeal.
Lord Neuberger explained that the court had sympathy for the manufacturer of Trunki because it had a good idea that the Hong Kong-based company copied, but CRDs protect designs, not ideas. In its judgment — which unusually and excitingly features pictures — the bench took a swipe at the Court of Appeal for reversing the judge’s decision, and said it could only do so if the judge “has erred in principle”.
The case will not be referred to the EU Court of Justice.
The wider implications of this judgment should not be underestimated. Ewan Grist, an intellectual property lawyer at Bird & Bird, said the case was “likely to have profound implications in the design world”.
When Legal Cheek spoke to Jeremy Blum, partner at Bristows LLP, he told us that the decision “will not be welcomed by innovative rights holders who rely on [CRDs] to prevent copycat products”. With this in mind, it’s perhaps unsurprising that Dids Macdonald, chief executive of Anti Copying in Design, had this to say:
This is a travesty and plunges design law into an abyss and will foster widespread confusion for UK.