Trunki successfully wheels out design rival before the High Court

27 August 2013

The High Court has recently found that design rights and copyright in the well-known 'Trunki' rideon suitcase for children were infringed by a Hong Kong based competitor's ride-on suitcase for children called the 'Kiddee Case'.

The decision means that the makers of the 'Trunki' can apply for a pan-European injunction preventing any further sales of its competitor's infringing products. The Defendant is appealing to the Court of Appeal so this case might run a little further yet.


'Trunki' design

The Claimant's founder first developed a ride-on suitcase for children as part of a national competition called the BASF/Institute of Materials Design Award in 1998 ("the Award").   The Claimant's founder had the idea of using injection rather than rotational moulding to produce a product that could be ridden by children but also hold considerable storage space.  The design was called 'Rodeo'. It ultimately won the Award, which was presented to the Claimant's founder at a public ceremony in 1998.

The Claimant's founder went on to develop the 'Rodeo' design into what became known as the 'Trunki'.

'Kiddee Case' design

The Defendant purchased a 'Trunki' in 2010 with the sole intention of producing a similar, albeit cheaper, version. The Defendant's product came to market in December 2012. The Defendant did not dispute that its product had been inspired by the Claimant's design.


Defendant's challenge to the validity of the 'Trunki' design based on the earlier 'Rodeo' design

The most interesting aspect of the court's decision was its assessment of the validity of the Claimant's 'Trunki' design in light of its earlier 'Rodeo' design. Under Article 7(1) of Council Regulation 6/2002/EC ("the Community Designs Regulation"), Community registered design protection is not afforded to a design that has been made available to the public before an application for registration has been made for such a design, unless the disclosure in question "could not reasonably have been known in the normal course of business to the circles specialised in the sector concerned".   The court accepted that the Award had been presented at a public ceremony and it was not unreasonable to assume that some members of the suitcase industry attended the ceremony.

However, despite the Award and public ceremony, the court held that the 'Rodeo' design was still relatively obscure and could not form part of the design corpus that an informed user would have been aware of at the time of the Claimant's application for Community registered design protection in the 'Trunki' suitcase. Instead, the design corpus that had existed at the time of the Claimant's Community registered design application consisted of adult clamshell suitcases. It was therefore held that the 'Trunki' design had been the first of its kind, which gave a different overall impression to the informed user, namely parents and children. In light of the substantial departure that the Claimant had made from the design corpus, and the considerable design freedom that a designer of ride-on suitcases for children had at the time, the Claimant's 'Trunki' design was entitled to a broad scope of Community registered design protection.

Claimant's infringement claims

Once the issue of validity of the 'Trunki' design had been established, the court turned to the Claimant's claims for infringement, which were based on three sets of intellectual property rights. A summary of the court's assessment in each of these areas is set out below. However, it is safe to say that this was a relatively straightforward case of infringement on all fronts.

1. Community registered design

Although the Community registered design and the 'Kiddee Case' design were not identical, there were sufficient similarities between them for an infringement. The design of the 'Kiddee Case' depicted the overall shape of the Claimant's 'Trunki' product. The court subsequently held that both designs produced the same overall impression.

2. UK unregistered design rights

The Claimant alleged unregistered design right infringement in six elements of its 'Trunki' design, however, the court found that two elements, namely the outside of the 'Trunki' clasp and the combinations of all six elements, were not protectable as unregistered designs as they were methods or principles of construction covering a multitude of different specific appearances, which were closer to patent claims than designs. Although an initial blow to the Claimant's case, its remaining four unregistered designs were found to be valid. The Claimant's case was further bolstered by the Defendant accepting that its 'Kiddee Case' design was exactly or substantially to three of its unregistered designs, namely, the metal parts of the 'Trunki' clasp, the 'Trunki' clasp as a whole and the 'Trunki' tow strap. Finally, although the Defendant refuted that the same could be said for the design of the inside of the 'Trunki' (including the inside straps and pouch), relying and on a number of alleged differences as evidence, the court ultimately disagreed.

3. Copyright

The Claimant owned copyright in its packaging artwork, which the Defendant had been inspired by in preparing its own packaging artwork. The court did not believe that the similarities between the two amounted to a reproduction of a substantial part of the Claimant's artwork. However, the Defendant conceded that it had copied the Claimant's safety notice and so was liable for copyright infringement in this regard.


The most interesting aspect of this decision is the court's consideration of the 'obscure disclosures' exception to novelty under Article 7(1) of the Community Designs Regulation rather than its assessment of the claims for infringement. The exception is one that is rarely the subject of court decisions so any judicial commentary is always particularly valuable. In considering whether the exception applied in this case, the court said that the key issue to determine was whether the earlier 'Rodeo' design could not reasonably have become known in the normal course of business circles specialising in suitcases as a result of the Award's public ceremony back in 1998. Although ordinarily the 'Rodeo' design would form part of the design corpus, its relative obscurity meant that it did not in this case and so could not be used to invalidate the Claimant's Community registered design.

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