The Trunki case – designers be forewarned

Trunki Trixie

Designers should take note of the decision and guidance offered following the UK Supreme Court decision in the Trunki case.

The UK’s highest court unanimously upheld the decision by the Court of Appeal that rival manufacturer of the Kiddee Case, PMS International Group Plc, did not infringe the UK registered design rights owned by Magmatic Limited (Trunki).

The case itself is reasonably complex in its assessment of the designs filed and interpretation of the relevant law. The decision includes assessment of the inclusion/absence of ornamentation and decoration in a registered design and the use of colours.

Some of the key points worth highlighting are:

  1. Where a design is shown in colours, the colours are claimed while a black and white drawing or photo covers all colours.
  2. The broadest claims can be achieved by drawings showing only the contours of the design.
  3. The Supreme Court suggests that as designers are in complete control of the designs registered, he can “make a large number of different applications”. Choosing too specific a level may not offer protection against similar designs.

Despite how it may seem from the decision in this case, registered designs are still a powerful tool to use against infringers.

We are expecting the UK Intellectual Property Office to issue new guidance for designers in light of this case. In the meantime, if this is relevant for your business, it would be prudent to seek out advice ahead of filing your applications.

An Innocent mistake

Innocent

A recent case involving the social enterprise responsible for Innocent Smoothies highlights the risks of not getting intellectual property rights assigned.

Fresh Trading Limited (Innocent) commissioned a design company to design a logo for its smoothie products. That logo is the well-known one shown here. In return for the transfer of the intellectual property rights (IPR) in the logo, the designers would receive shares in Fresh Trading Limited.

The design company never received its shares and the agreement drafted between the two companies was never signed. Some years later, a dispute over the ownership of the rights in the logo ended up in High Court litigation after Innocent lost the rights to its trade marks.

The court ultimately found in favour of Fresh Trading Limited (Innocent) but this case highlights important factors for both designers/design agencies and those commissioning designs.

  1. The IPR in a design are owned by the designer unless contractually stated otherwise.
  2. The transfer of IPR should be clearly documented in a written and signed agreement.
  3. While assets other than cash can be used to pay for design services, the agreement should clearly state what those assets are and what happens to the rights in the designs if payment is not made.

The risks of overlooking these details are:

  1. Costly legal proceedings for both parties.
  2. Loss of the brand and its associated value for the commissioning business.
  3. Costs of re-branding for the commissioning business.
  4. Expense of buying the IP rights from the designer.