Though it had some regret, the Supreme Court today upheld the Court of Appeal judgment finding that the Kiddee Case by PMS did not infringe the registered design protecting the Trunki ride on suitcase (by Magmatic).

The decision given by Lord Neuberger with unanimous agreement will not be welcomed by innovative rights holders who rely on Community registered design (CRD’s) to prevent copycat products. The Supreme Court confirmed Lord Justice’s Kitchin in the Court of Appeal rightly focused his assessment that the overall impression of the design was a horned animal and the fact the design had no decoration re-enforced that overall impression.  In contrast the impression of the Kidde Case was influenced by 2 tone colouring and the fact it looked like a lady bird or tiger and had antenna or ears.  Therefore, the Court of Appeal was not wrong to say the decoration of the Kidde Case affected how the shape itself strikes the eye and the overall impression it gives.

Interestingly, the Supreme Court did say it would have found the same result as the Court of Appeal, but only with regret as it recognised Trunki was original and clever.  However, this judgment crystallised a truth known to practitioners that CRD’s do not protect the idea or invention only the design.

A major plank on appeal was the contention whether a design feature of a CRD could be an absence of decoration. Given the Court of Appeal did not make such a free-standing contention the Supreme Court did not need to address it but in obiter comments said it was plain that absence of decoration as a matter of principle could be a feature of registered design.   This is a principle that famously appeared in the Apple v Samsung phone case and must turn on the proper interpretation of the images for the registered design. It can be difficult to construct whether this was a feature intended.  The Supreme Court stressed that absence of decoration does mean an accused design with decoration will avoid infringement, it just mean ornamentation is a factor which can be taken into account.

The Supreme Court left open if absence of ornamentation was a feature of the CRD in this particular case, as it did not need to be resolved on appeal.

The final issue was the contrast colouring of the CRD.  The Court of Appeal said the judge failed to take the contrast in wheel colour compared to the other aspects of design into account.  The Supreme Court had little sympathy for the argument of Magmatic that the contrast was shown because the wheels had a function.   In considering the scope of protection of CRDs, rights holders must assess if there is a colour contrast in black and white designs and the impact that has for enforcement.  The interpretation of the CRD is always vital and it is now clear the UK approach is that a colour contrast in black and white will be a feature affecting the overall impression of the design.

No issues needed to be referred to the CJEU because there was no point of law at issue. The issues all focused on interpretation of the images of the CRD at issue.  Though the contention of absence of ornamentation was a point of EU law, it did not raise an issue on appeal and further the Supreme Court did not consider it was arguable as Lord Neuberger considered that minimalism of design self evidently could be an important aspect of design.

In future, the key to enforcement of CRDs that have no ornamentation will be to assess if the overall impression of the accused product is affected by decoration.  Before this decision, it might have been more likely rights holders would dismiss surface decoration on an accused product if their CRD had none.  Now, in the right context, decoration must be taken into account if it significantly affects how the shape itself strikes the eye.