Supreme Court Sends Magmatic Packing
PMS International Group Plc v Magmatic Limited (2016) UKSC12. The Supreme Court has dismissed the appeal brought by Magmatic regarding the infringement of its Registered Community Design (RCD) for the ‘Trunki’ children’s suitcase.
The decision confirms the earlier finding of the Court of Appeal that PMS’s ‘Kiddee’ suitcase does not infringe the RCD. The outcome of this three-year legal dispute raises some important points to consider when preparing the drawings to be filed with a registered design application.
We previously reported in our 2014 Spring/Summer edition of Inside IP the Court of Appeal had overturned the High Court’s decision that the Kiddee suitcase infringed Magmatic’s RCD. The Court of Appeal criticised certain aspects of the trial judge’s approach to assessing whether the Kiddee case produced the same overall impression on the informed user as the RCD – the test for determining infringement. The appeal to the Supreme Court centred on whether this criticism was justified and, in particular, whether the trial judge had overlooked the following:
- That the RCD gave the overall impression of being a horned animal.
- The lack of ornamentation on the surface of the RCD, and the effect that this had on the overall impression.
- The effect on the overall impression of the contrasting colours shown in the greyscale CAD images of the RCD.
The Supreme Court has ruled that the trial judge did indeed not give enough consideration to the fact that the RCD conveyed the overall impression of a horned animal, which was significantly different to the overall impression imparted by the Kiddee suitcase, which was either an insect with antennae or an animal with ears.
It was not deemed necessary to pass judgement on whether the lack of ornamentation on the surface was a limiting feature of the particular RCD at issue. However, Lord Neuberger commented (in obiter) that, as a matter of principle, the absence of decoration can be a feature of a registered design. He reasoned that simplicity or minimalism may be an aspect of a design, and it would be “very curious” if a design registration system did not cater for this.
Lord Neuberger briefly summarised the case law on the interpretation of surface ornamentation, observing that a line drawing is much more likely to be construed as not excluding such ornamentation than a CAD image. However, he noted that the absence of ornamentation can be a feature of a registered design even where the images consist of line drawings, citing the earlier case of Samsung v Apple (Court of Appeal, 2013) in which the RCD at issue included line drawings showing a plainness and transparency of the surfaces that suggested the incidence of light thereon, which implied that no other ornamentation was intended. This commentary emphasises what is already known, namely that great care should be taken to ensure that the drawings filed with a registered design do not unintentionally depict features that unduly limit the scope of protection. This is particularly true if protection of a novel shape is important and the applicant does not intend the absence of surface ornamentation to be a limiting feature of the registered design.
On the issue of the contrasting colours shown in the greyscale images, the Supreme Court has ruled that this contrast does effect the overall impression of the RCD. Thus, whilst the trial judge was correct to conclude that the greyscale drawings did not limit the RCD to a particular colour scheme, the RCD was not a claim for the shape of the suitcase alone, but for a suitcase with a strap, wheels and spokes which contrasted with the remainder of the suitcase. This would likely not have been an issue if the RCD was filed with black-and-white line drawings, which generally offer the broadest scope of protection.
In view of the above findings, it was decided that the Court of Appeal had addressed the question of infringement on the correct basis in law and that therefore the present appeal should be dismissed. Furthermore, there were no grounds for appealing to the Court of Justice of the European Union. Lord Neuberger concluded by expressing sympathy for Magmatic, remarking that the award-winning Trunki suitcase was both “original and clever” and noting that it was not disputed that Magmatic’s design had been the inspiration for the Kiddee suitcase.
A full analysis of this decision will follow shortly in our upcoming spring/summer edition of Inside IP.
Magmatic’s ‘Trunki’ suitcase:
PMS’s ‘Kiddee’ suitcases: