The Supreme Court dismissed Magmatic’s appeal and upheld the conclusion that PMS’s Kiddee Case did not infringe Magmatic’s Community registered design for the Trunki ride-on suitcase. The monochrome computer-aided images did not claim a shape alone: they created the overall impression of a horned animal, with the strap, strips, wheels and spokes in a contrasting tone. Because the trial judge had not properly taken that impression and contrast into account, the Court of Appeal had been entitled to compare the designs afresh.
Magmatic Ltd owns Community Registered Design No 43427-0001, published on 28 October 2003 and indicated for suitcases. It comprises six monochrome computer-aided images of a children’s ride-on suitcase. The body, horns and clasps are light grey, while the wheels, spokes, top strap and front and rear strips are black. Robert Law had won a prize in 1998 for an earlier design, the Rodeo, and then updated it for registration. From May 2004 Magmatic sold a very similar product under the Trunki name.
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In February 2013 Magmatic sought damages and an injunction against PMS International Group plc. It alleged that the Kiddee Case, imported and sold by PMS in the United Kingdom and Germany, infringed the registration, as well as United Kingdom unregistered design rights and copyright. The Kiddee Case is also an animal-like ride-on suitcase with four wheels, a front clasp and a saddle-shaped top. The examples were brightly coloured, with eyes and either spots or stripes and whiskers. Their front protuberances appeared as antennae or ears rather than horns, their ridge was unsculptured, and their wheels were covered.
The comparison required by the registration
Council Regulation (EC) No 6/2002 protects a design so far as it is new and has individual character. Protection extends to any design which does not produce a different overall impression on the informed user, taking account of the designer’s freedom. The registered images identify the scope of the claim. An applicant may choose a broad or specific representation, and a monochrome filing is not confined to particular colours. What the images visibly show is nevertheless claimed.
The decision at trial
Arnold J treated the informed user as primarily a parent, carer or relative of a three- to six-year-old child. He regarded the design corpus as consisting of adult clamshell suitcases. The Rodeo had been disclosed too narrowly to belong to that corpus, although it reduced the scope of protection. He held the registration valid. He then disregarded surface graphics on the Kiddee Case because he considered the registration to claim shape alone. After comparing features such as the contours, covered wheels, flared clasp areas and missing lip, he held that the Kiddee Case produced the same overall impression. He found infringement of the registration and the unregistered design rights, but not of copyright.
The Court of Appeal
PMS appealed solely on registered-design infringement. Kitchin LJ, with whom Moses and Black LJJ agreed, identified material errors. The images were not simple line drawings: considered as a whole, they conveyed a horned animal, and that impression had to be included in the global comparison. Decoration on the Kiddee Case affected the impression created by its shape, making one example look like a ladybird with antennae and another like a tiger with ears. The contrast between the body and the black wheels, strap and strips was another striking feature of the registration and was absent from the accused cases. The Court of Appeal therefore made the comparison itself and held that the overall impressions were very different. There was no infringement.
Why the Supreme Court agreed
Lord Neuberger gave the judgment of the Court; Lord Sumption, Lord Carnwath, Lord Hughes and Lord Hodge agreed. An appellate court should not replace a trial judge’s overall assessment unless the judge erred in principle. Once Kitchin LJ found material errors, the Court of Appeal could decide infringement itself. The Supreme Court could disturb that decision only if the Court of Appeal had also gone materially wrong.
The Court accepted that Arnold J had failed to give proper weight to the horned-animal impression. It was more significant than many details he listed, yet he did not use it in the comparison with the Kiddee Case. His description of the accused handles as horn-like indicated that he had not recognised what was distinctive. A full judgment may properly be read as overlooking an important point which it does not mention.
The criticism concerning decoration had only limited independent force, but it reinforced the first point. The unadorned registration supported the horned-animal impression, whereas the Kiddee Case decoration produced a ladybird or a tiger. Lord Neuberger did not treat this as a holding that this registration claimed absence of ornamentation. He considered, although it was unnecessary to the decision, that absence of ornamentation can in principle be a feature of a Community design because minimalism may itself be designed. Whether it is claimed depends on the images, and ornamentation on an accused product is then only a factor in the comparison. He expressly left open whether absence of ornamentation was a feature of this particular registration.
He also agreed that Arnold J had wrongly treated the registration as a shape claim. A grey body combined with black wheels, spokes, strap and strips naturally claims those components in a contrasting colour. The accused product’s colouring therefore had to be considered on a like-for-like basis. The covered wheels had been considered, but not that contrast.
The registration thus protected a wheeled suitcase shaped like a horned animal, with its strap, strips, wheels and spokes in a contrasting colour or colours. The Court of Appeal had reconsidered infringement on the correct basis, and there was no ground for interfering with its finding of no infringement. Lord Neuberger would have reached the same conclusion. The Trunki concept was original, award-winning and commercially successful, and Mr Beverley of PMS had conceived the Kiddee Case after seeing a Trunki and finding that no discount model was available. The appeal nevertheless concerned the registered design, not the idea behind it.
No question for the CJEU
Magmatic alternatively sought a reference to the Court of Justice on the ornamentation and colour issues. The Comptroller General of Patents, Designs and Trade Marks supported a reference but otherwise took no position. Lord Neuberger refused one. Interpretation of these images raised no point of EU law suitable for reference. The contention that absence of ornamentation can never be a design feature did not arise, and he did not consider it arguable.
Verdict: The Court unanimously dismissed Magmatic’s appeal. The Kiddee Case did not infringe the registered design. Whether this particular registration claimed an absence of ornamentation remained open.
Source: PMS International Group Plc v Magmatic Limited [2016] UKSC 12
