It will no doubt have come to the reader’s attention by now that the Supreme Court has handed down its judgment in the case of PMS International Group Plc v Magmatic Limited [2016] UKSC 12, relating to the potential infringement by PMS of an EU community registered design held by Magmatic in respect of its famous ‘Trunki’ brand of ride-on children’s suitcases (the Magmatic CRD). The case highlights some practical tips for those of you who are looking to protect your products by way of design right.
You may well have seen the Trunki suitcases on your travels (your friends in the right age bracket may well even own one!) and one need only do a quick search of the internet to reveal that the concept of the ride-on children’s suitcase and the Trunki brand are almost synonymous. The Trunki was certainly unique when it came to market and firmly falls in that infuriating (but brilliant) category of ideas headed ‘I wish I had thought of it first’.
However, ‘almost synonymous’ is not the same as a total monopoly, and the emergence of the ‘Kiddee Case’ produced by PMS along with several other dissimilar but competing products produced by other manufacturers and sold at a lower price point, has challenged the Trunki’s position in the market. It is the Kiddee Case to which this case relates, and the similarities between the PMS design and the Magmatic CRD led, in February 2013, to Magmatic bringing a claim against PMS that the Magmatic CRD had been infringed by sales by PMS in the UK and Germany of the Kiddee Case.
The case
At first instance, Arnold J found in Magmatic’s favour, and in doing so focused on the overall shape of the two suitcases and what Arnold J saw as the inherent similarity between the two shapes. In coming to his conclusion, Arnold J ignored any apparent differences in graphical design or surface decoration, determining that the PMS design infringed the Magmatic CRD by reason of the similarity in overall shape alone and that at the same time the PMS design also infringed various Magmatic unregistered design rights in the components of the Trunki design.
PMS appealed to the Court of Appeal on the issue of whether the PMS design infringed the Magmatic CRD. The Court of Appeal reversed the High Court decision on the basis that the “overall impression created by the two designs is very different”, finding that Arnold J had been mistaken in focusing only on the overall shape of the two suitcases in his comparison of the two designs. This reasoning was, following further appeal by Magmatic, affirmed by the Supreme Court in its judgment from last Wednesday, with Lord Neuberger agreeing with the Court of Appeal that the reasoning of the High Court was incorrect due to the following:
(i) “…Arnold J failed to give proper weight to the overall impression of the CRD as an animal with horns, which was significantly different from the impression made by the Kiddee Case, which, in the examples shown in para 4 above, were either an insect with antennae or an animal with ears”; and
(ii) “… the judge [Arnold J] ignored the colour contrast in the CRD between the body and the wheels.”
In coming to its conclusion, the Supreme Court noted that the presence of the antennae or ears in the Kiddee Case design should properly have been taken into account when assessing the overall impression of the Magmatic CRD as an animal with horns, and that the Court of Appeal correctly applied these distinguishing characteristics in assessing the overall impression of the two designs. In the process, the Court of Appeal was able to identify fundamental differences between the two designs, and deemed that the PMS design did not infringe the Magmatic CRD. The Supreme Court agreed with this analysis.
Further, the Supreme Court highlighted that the Magmatic CRD was a computer-aided-design (CAD) drawing of a shape in two contrasting colours and that, whilst it is established law that a design registered in a monochrome colouring covers all colours, because of the nature of the CAD itself (it had what the Supreme Court saw as deliberately different coloured wheels), the Magmatic CRD should properly be regarded as a design specifically made in two contrasting colours (i.e. the separate colours of the case and the wheels) for the purposes of any comparison with other designs. This meant therefore that the colouring and surface decoration of the PMS design should also be taken into account in any comparison with the Magmatic CRD, and because this ornamentation was different it provided further grounds to state that the PMS design did not infringe the Magmatic CRD.
In a useful side statement, the Supreme Court also noted that a lack of ornamentation in a design can constitute a feature of a CRD in and of itself and there are also some useful points arising out of these comments (see also our comment below). The Supreme Court highlighted the difference between line drawings of a product shape or outline (which are inherently less suited to showing ornamentation in a design) and photographs or CAD drawings which may show “subtle shading, contours, as well as decoration, such as colours and ornamentation”. As a result, whilst each drawing or image should be viewed on its merits, a line drawing may grant a wider degree of protection for a design on the basis that it shows only the shape of the design and does not introduce any limiting detail as to the nature of the surface of the structure.
Comment
Whether you agree with the decision or not (and even Lord Neuberger expressed regret at the outcome), this case does highlight some practical tips for individuals and businesses developing and protecting their design rights:
- appropriate thought should be given as to how a particular design is registered and the drawings or images used as part of the registration. Simply put, if an element of detail is not included in the registration then it will not be protected. However, a balance needs to be struck between registering an appropriate level of detail to ensure adequate protection and, on the other hand, avoiding limiting the protection available through the provision of too much detail, such that other designers could distinguish their similar shaped products through different decorative components on the external surface;
- as to this balance, it is certainly worth remembering that there is no limit on the number of designs that can be registered in respect of a particular product (assuming no pre-existing conflicts with other registered designs) and that the registration process is relatively inexpensive (or at least it is when compared to the financial upside of a successful product or the costs of litigation). On this basis, thought could be given to the registration of a base line drawing of a design, supplemented by additional, more specific, designs showing various ornamentation and decorative options. Whilst design permutations are infinite, a concerted strategy here may well provide some mitigation and offer a wider measure of protection than one registration would alone (similar then to well-established trade mark strategies employed by larger brands); and
- it is always worth considering the wider suite of intellectual property rights that are found within a relevant development or product and how these interact with any design rights that might exist. Registration of a design as a CRD may well be an option available to a product designer but, as can be seen from the Trunki case, these rights are often very specific and should be viewed as part of a considered protection strategy in conjunction with other rights that may arise naturally (e.g. copyright or unregistered design rights), or those rights that are also available for registration (e.g. patent or registered trade mark protection).
Charles Maurice