On 9 March 2016, the UK Supreme Court upheld the Court of Appeal's ruling that the 'Kiddee Case', by PMS International Group plc (PMS), did not infringe Magmetic Limited's Trunki Case design (Community Registered Design No. 43427-0001) (the 'CRD').

Background

Magmetic Limited (Magmetic) design, manufacture and sell the Trunki, ride-on, children's suitcases. PMS sells the Kiddee Case luggage. Magmetic claimed that PMS infringed the registered design rights of its Trunki Case with a similar animal design suitcase.

What was decided?

The UK Supreme Court held that it could not interfere with the Court of Appeal's decision because it had utilised the correct basis in law in arriving at that decision.

Lord Neuberger, of the UK Supreme Court, reiterated that in determining whether a Community Registered Design is infringed by an item, a judge must decide whether the item produces on the informed user a different overall impression from the design. The CRD being relied upon was represented by minimalist monochrome 3D Computer Assisted Design images with absent ornamentation, and thus the design right protection granted to Magmatic was only in relation to such minimalist design. Lord Neuberger expressed that 'an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses', and Magmetic chose to submit minimalist grey-scale images as a representation of the design which it wanted to protect as a Community Registered Design. On the other hand, the Kiddee Case was brightly coloured, with eyes at the front, decorated with spots or stripes and whiskers, and had covered wheels. Consequently, based on the CRD, it was held that the overall impression created by the two designs was very different.

Lord Neuberger's judgment went further by expressing that, even if he were able to interfere with the earlier decision of the Court of Appeal, he would have arrived at the same conclusion. However, Lord Neuberger said that it would have been a conclusion that he would have reached regretfully, as the conception of the Trunki Case seemed to him to have been 'both original and clever'. Lord Neuberger even brought to light that 'Mr Beverly of PMS conceived the idea of manufacturing the Kiddee Case as a result of seeing a Trunki Case, and discovering that a discount model was not available'. He clarified 'unfortunately for Magmatic however, that this appeal is not concerned with an idea or an invention, but with a design' - perhaps alluding to the limited scope of Magmetic's CRD or maybe even a misunderstood or misused Community Design Rights framework. What does the judgment mean for designers?

Many commentators are expressing their concern that this judgment will adversely impact the design industry to the extent that it will deter creators in investing in designs because those creators will think that their design will not be afforded sufficient protection. We hope that this the judgment will prompt creators to pay greater attention to the designs they submit as part of a Community Design Right application, because, in the words of Lord Neuberger, it will 'almost always be those images which exclusively identify the nature and extent of the monopoly which is [claimed]'. To read the UK Supreme Court's full judgment click here.