The Supreme Court has had its final say in the battle of ride-on wheels and 'with regret' dismissed Magmatic Limited's (Magmatic) appeal.

Over a year ago, the Court of Appeal considered the overall impression of PMS International Ltd's (PMS) 'Kiddee Case' design against Magmatic's Trunki design and ruled that there were differences, taking into account the surface decoration used and contrasting colours. Magmatic had previously argued that since its CAD drawings did not detail any surface decoration, any decoration (which potentially acted to differentiate PMS' 'Kiddee Case') should be ignored in deciding if Magmatic's community registered designs (CRD) had been infringed. Magmatic subsequently appealed the decision and requested that the question of whether the absence of surface ornamentation can be considered a feature of a CRD be referred to the Court of Justice of the European Union.

The Supreme Court has now upheld the decision of the Court of Appeal and ruled that PMS did not infringe Magmatic's CRD. This decision is undoubtedly a very bitter pill for Magmatic, as PMS has never denied that it developed the idea as a result of seeing the Trunki products on sale.

The Supreme Court agreed with the Court of Appeal that the CRD was not merely for the shape of the Trunki case, but a shape in contrasting colours. By colouring the Trunki case’s wheels, strap and strips black in their CRD application, Magmatic has therefore unintentionally limited the scope of protection offered under UK law. As a result, when comparing the Trunki and Kiddee Case suitcases on a 'like for like' basis, the Court considered that the overall impression was different.

Although the Supreme Court did not take the opportunity to formally clarify the position in relation to an absence of surface decoration, it does appear from this decision that surface decoration should be taken into account when deciding infringement. However, the absence of surface decoration in a CRD does not mean that an item with surface decoration cannot infringe - it is to be decided on the specific facts.

The Supreme Court has been clear that 'Design Right is intended to protect designs not ideas'. This highlights the importance for business to carefully consider the designs they are seeking to register and the potential difficulty for businesses to protect evolving designs by way of CRD.

Historically, designs have been registered using rendered CAD format - this case highlights the shortcomings of that method and suggests that these are are no longer offered the same protection as line drawings, as infringing parties could claim differences by way of surface decoration. This decision does raise real concerns that copycat businesses may now be able to replicate CAD based CRDs without legal repercussions by simply altering surface decoration.

It is now clear that the scope of protection obtained through a CRD will vary depending on the illustrations used in the application process. The UK IPO guidance does not currently address this point and we therefore expect this to be updated shortly to give clearer guidance to creative businesses/individuals on how to register their designs for the fullest protection available.