The Supreme Court dismisses appeal in design case concerning ride-on suitcases

Case: PMS International Group plc v Magmatic Ltd [2016] UKSC 12, 9 March 2016

The Supreme Court has rejected an appeal by Magmatic Ltd, a company that manufactured and sold the ‘Trunki’ ride-on suitcase, against the Court of Appeal’s decision that the respondent’s ride on-suitcase did not infringe its Community registered design.

Robert Law, former Dragon’s Den entrepreneur, who designed the well known Trunki ride-on suitcase, suffered a major set-back by losing the design dispute at the Supreme Court.

The Court of Appeal was free to reconsider the question of infringement because it found that the High Court erred in the assessment. The Court found that the overall impression created by the respondent’s suitcase on the informed user was different to the Community registered design.

Background

European Community designs, whether registered or unregistered are governed by the Community Designs Regulation (6/2002/EC) (“CDR”). They must be ‘new’ and have ‘individual character’ (Article 4(1)). Under the CDR a ‘design’ is defined as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colours, shape, texture and/or materials of the product itself and/or its ornamentation’ (Article 3(a)). The scope of protection under the CDR includes any design which does not produce on the informed user a different overall impression from the design (Article 10(1)).

Facts

The appellant, Magmatic Ltd, manufactured and sold a children’s ride-on suitcase under the trade mark Trunki. Mr Law, the founder of Magmatic Ltd, applied for a Community registered design, which was subsequently granted for ‘suitcases’ (number 43427-0001) (the CRD).

In December 2012, PMS International Ltd, the respondent started importing and selling a look-a-product under the name Kiddee Case. The design was inspired to some extent by the Trunki product.

In July 2013, Mr Justice Arnold of the High Court held that the Trunki CRD had been infringed by the Kiddee Case and the design right in four of the six designs claimed. The High Court held that whilst there were some differences between the design features of both suitcases, the overall impression created by the designs on the informed user be that a parent, carer or relative of the child was the same. PMS limited appealed to the Court of Appeal.

The Court of Appeal overturned the High Court decision and ruled that the Kiddee Case did not infringe the CRD. Kitchin LJ with whom the rest of the court agreed found that Mr Justice Arnold had erred by:

  • Failing to given proper weight to the overall impression of the shape of the CRD as an animal with horns, which was significantly different from the impression made by the Kiddee Case, which were either an insect with antennae or an animal with ears (first criticism).
  • Failing to take account of effect of the lack of ornamentation on the CRD’s surface; and the presence of decoration on the Kiddee Case (second criticism).
  • Ignoring the colour contrast in the CRD between the body and the wheels (third criticism).

On the basis of the High Court judge’s errors, the Court formed its own view on infringement and found most importantly, that the overall impression created by the two designs was very different. That being the case, the Kiddee Case did not infringe the CRD and Magmatic appealed.

Decision

The Supreme Court rejected Magmatic’s appeal and sided with the Court of Appeal’s assessment of Mr Justice Arnold’s judgment. Lord Neuberger gave the leading judgment of the Court.

Before turning to consider the criticism against the High Court, Lord Neuberger made general comments about the proper approach to images of a Community registered design (see paragraph 30 to 35 of the judgment).

First criticism: failure to give proper weight to the CRD’s horned animal appearance

Lord Neuberger concluded that the Court of Appeal was justified in its first criticism because:

  • Kitchin LJ was clearly right in saying that the overall impression given by the CRD was that of a horned animal.
  • This was not a factor to which Mr Justice Arnold specifically referred to when comparing the CRD and the Kiddee Case.
  • An appellate court could properly conclude that by failing to mention a salient point, a judge overlooked it.

Second criticism: failure to take account of the decoration of Kiddee Case

Lord Neuberger also agreed with the Court of Appeal’s second criticism in that the absence of decoration on the CRD reinforced the horned animal impression made by the CRD. Magmatic argued that the second criticism raised a significant question of principle which should be referred to the ECJ, namely whether the absence of ornamentation could as a matter of law, be a feature of a registered design. Lord Neuberger expressed the following view as obiter on whether a Community registered design could include an absence on decoration:

  • The absence of decoration could, as a matter of principle, be a feature of a registered design. Simplicity or minimalism could notoriously be an aspect of a design and it would be very curious if a design right registration system did not cater for it.
  • Whether absence of ornamentation was a feature of a particular design right had to turn on the proper interpretation of the images on the registered design.
  • It might be difficult to decide if absence of ornamentation was a feature of a particular registered design because Article 36(3) of the CDR and Article 4(1) of the Implementing Regulations (2245/2002/EC) precluded any verbal descriptions.
  • If absence of ornamentation was a feature of a registered design, that did not mean that because an item had ornamentation, it could not, for that reason alone, infringe the registered design in question; it merely meant that the fact that an allegedly infringing item had ornamentation was a factor that could be taken into account when deciding whether or not it did infringe that design.

Third criticism: failure to take account of CRD’s two-tone colouring

Lord Neuberger also agreed with Kitchin LJ that the CRD claimed not merely a specific shape but a shape in two different colours, one represented as grey and the other as black in the images and that Mr Justice Arnold was wrong in holding that the CRD was a claim simply for a shape. This conclusion was reached because:

  • If, as in the case of the CRD, a Community registered design applicant elected to submit CADs of an item, whose main body appeared as a uniform grey, but which had a black strip, a black strap and black wheels, the natural inference was that the components shown in black were intended to be in a contrasting colour to that of the main body. This conclusion was reinforced by the fact that other features such as the clasps or the horns were not shown in a contrasting colour. Magmatic’s argument that the wheels were shown black because they had a specific function was unconvincing.
  • Once one concluded that a registered design claimed not just a three-dimensional shape, but a three-dimensional shape in two contrasting colours, one colour for the body and another colour (or possibly other colours) for specified components, it had to follow that when one compared the allegedly infringing article with that design on a “like for like” basis, one had to take into account the colouring on that article.

Comment

This is an interesting decision on the scope of Community registered design protection and the relevant factors to take into account when determining how similar or different competing products are. One impact of this ruling will be to make design registrants give more though to the way in which they represent their designs in the design registration process to ensure they benefit from maximum protection.

The case is also significant for Lord Neuberger’s obiter finding that the absence of ornamentation could be a feature of a Community registered design as this would take into account the simple and minimal aspect of a design.

The impression created by the designs is a central concept of this case. A key factor was that, while the defendant’s suitcases may have arguably looked very similar to the Trunki case as sold, they did not create the same overall impression as the CRD itself.

Read the full judgment here: http://www.bailii.org/uk/cases/UKSC/2016/12.html