Supreme Court dismisses registered design rights appeal
On 9 March 2016, the Supreme Court handed down its decision in Magmatic Ltd v PMS International Group plc, finding that PMS’ Kiddee Cases did not infringe Magmatic’s Community Registered Design (CRD) for its Trunki children’s suitcases.
Trunki, an animal shaped ride-on suitcase, was originally designed and developed by Robert Law, founder of Magmatic, in the late 1990s. To protect the Trunki design, Magmatic registered a CRD consisting of six images in monochrome prepared by a 3D Computer Assisted Design (CAD).
In February 2013 Magmatic issued proceedings seeking damages and an injunction against PMS, alleging that PMS was importing into, and selling in, the United Kingdom and
Germany a ‘Kiddee Case’ which
infringed its design rights.
Magmatic won the case at first instance, however PMS successfully challenged the High Court ruling in the Court of Appeal. The Supreme Court ruled that the Court of Appeal was correct in finding that the Kiddee Case did not infringe the Trunki CRD. The overall impression of the CRD was of a wheeled suitcase in the shape of a horned animal, whereas the Kiddee Case resembled an insect with antennae or an animal with floppy ears.
The lack of surface decoration on the CRD reinforced the impression of a horned animal. A CRD in monochrome is not limited to particular colours.
However, that the CRD was depicted in two monochrome colours, grey for the body of the suitcase and black for the wheels, strap and the strips on the front and the rear, represented a potentially significant difference between the CRD and the Kiddee Case.
The Supreme Court sympathised with Magmatic because it had an original and clever idea that PMS copied. However, ultimately a registered design right protects only the particular design of the product and not the concept behind the product.
Robert Law, the award winning creator of Trunki and CEO of Magmatic, said he was devastated by the judgment and that he was “bewildered by this judgment, not just for ourselves but for the huge wave of uncertainty it brings to designers in Britain”. Paul Beverley, Managing Director of PMS, was delighted with the judgment and said “The decision is not just the right result for our company, but most importantly a victory for hardworking British families for fair competition. It upholds the right of consumers to be able to choose competitively priced products.”
It is expected that the judgment will have profound implications on small UK businesses that rely on design rights. The judgment makes clear that design law protects the appearance of the product and not the idea. It will be more difficult to enforce a CRD unless a competitor produces a very similar or exact design. Designers now need to be very careful when submitting designs for registration. In Magmatic it was unlikely that the colour contrast between the wheels and the strap to the body of the suitcase was fully appreciated on registration. The judgment also indicated that CAD images may narrow the protection provided to the design compared to line drawings, as CAD images can easily show subtle shadings, decoration and contours. Accordingly, if it is only the shape of the design that requires protection, it may be more beneficial to submit a line drawing rather than a CAD image.