UK: UK Supreme Court Judgment In PMS International Group Plc V. Magmatic Limited Upholds Decision Of The Court Of Appeal In Finding No Infringement Of Community Registered Design

The UK Supreme Court has handed down its decision in the matter of infringement of a Community Registered Design (CRD) relating to ride-on suitcases for children. The "Trunki" suitcases originate with a UK company, Magmatic Ltd., and are found in a number of animal-like designs. Magmatic had obtained CRD protection using images obtained from a 3D CAD program. PMS International Group plc introduced a competing product, the "Kiddee Case", which also had a range of animal-like designs, albeit different from those of the Trunki range. It was not contested that the designer of the Kiddee Case had seen and derived inspiration from the Trunki case.

At first instance, the judge in the UK High Court held that Magmatic's CRD was valid and infringed. The UK Court of Appeal overturned this decision, identifying two errors by the judge in the first instance: a failure to consider the overall impression of the design as "a design for a suitcase which, considered as a whole, looks like a horned animal"; and a failure to take account of color contrast between the wheels and the body of the case as shown in the CRD images. As a result, the Court of Appeal was entitled to form its own opinion on the question of infringement, and in doing so reversed the original decision, finding no infringement.

The Supreme Court, while noting Magmatic's originality and creativity in the original Trunki design, upheld the decision of the Court of Appeal, noting:

The issue of the overall impression of the CRD as being a horned animal was correct, and the Kiddee Case animals were not horned, but had ears or antennae. While these served the same function, this is not the same as being the same design.

The effect created by the surface decoration of the Kiddee Case must be taken into consideration when considering the overall impression created, despite the fact that the CRD images for the Trunki did not include any surface ornamentation. The absence of surface ornamentation reinforced the overall appearance as a horned animal. While it was not at issue here, the court did comment, obiter, that the absence of surface design could constitute a feature of a design, drawing attention to the decisions of the courts in the UK, Germany, and the Netherlands in the Apple v. Samsung cases relating to the design of mobile phones.

The use of two-tone coloring in the CAD drawings used in the Trunki CRD drew attention to the wheels, spokes, strap and strips on the front and rear. As such the CRD was to be considered as protection not merely for the shape, but for the shape in two contrasting colors, and it is the overall impression created by this contrast that must be considered when looking at infringement.

The court refused to refer the case to the Court of Justice of the European Union, noting that the appeal related to how to interpret the images of a particular CRD, not the underlying law. Additionally, there was no basis for a referral on the contention that absence of ornamentation cannot be a feature of a CRD. In addition to stating that minimalism can self-evidently be an important aspect of design, the court noted that no authorities had been cited to support the proposition that would justify such a referral.

Practice Note

The decision of the court in this case confirms the position that CRD protection for a shape is best obtained by use of line drawings or single color renderings. Shading or multi-color images will have the effect of limiting protection to the impression created by such shading or color contrast. Calling out functional parts by use of color contrast runs the risk of this being considered an essential part of the design.

Where certain elements of a design can be implemented in different forms (such as the horns, ears, and antennae in this case), each giving a slightly different overall impression, a series of designs should be filed showing each of these.

Where surface ornamentation significantly affects the overall impression of a design, having applications both with and without such ornamentation gives the best possibility of broad coverage.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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