Following a three-year legal battle, the Supreme Court has handed down an eagerly-awaited judgment finding that PMS did not infringe Magmatic’s Community Registered Design of the Trunki ride-on suitcase.
The case will have significant ramifications for designers, particularly in relation to the insight given in Lord Neuberger’s judgment as to how Community Registered Design applications should be drafted and how they will be interpreted by the courts.
For those who have boarded a flight over the last thirteen years, the sight of a Trunki case being pulled through the airport may well be a familiar one. Founded in 2003 by designer Rob Law, by 2014 the popular product was sold in 97 different countries and has enjoyed sales of over one million units. However, behind the scenes of the company’s success, a long-raging legal battle against its competitor finally came to an end on 9 March 2016.
The dispute focused upon the design of a children’s ride-on suitcase which was published as a Community Registered Design (CRD) on 28 October 2003 and subsequently marketed and owned by Magmatic Limited as the Trunki case. In February 2013 the company initiated proceedings against PMS, arguing that their version of the ride-on suitcase (the Kiddee case) infringed Magmatic’s CRD.
The registered design dispute
The main test in a registered design dispute is whether the overall impression that the design of the allegedly infringing item produces on the informed user is different to that of the Community Registered Design. An informed user is neither the average consumer nor the sectoral expert with detailed technical expertise, but lies somewhere between the two. If an allegedly infringing design does not create a different impression on the informed user than the CRD, the design will be held to infringe the CRD.
The judge found for Magmatic Limited at first instance, with Arnold J holding that Magmetic’s CRD “is evidently for the shape of the suitcase, and the proper comparison is with the shape of the Kiddee Case.” In comparing the two designs, he agreed with Magmatic that “the graphical designs on the surface of the Kiddee Case are to be ignored.” As a result, in comparing the shapes and taking no consideration of markings on the side or the eyes at the front of the Kiddee case, Arnold J found that there had been infringement.
PMS successfully appealed the judgment, with the Court of Appeal noting three criticisms of the first instance court’s interpretation of the CRD and overturning its decision. In a subsequent appeal to the Supreme Court, Lord Neuberger reaffirmed the decision of the Court of Appeal and agreed with its three criticisms of the trial judge’s approach (PMS International Limited v Magmatic Limited  UKSC 12).
The overall impression of an animal with horns
The first criticism of Arnold J’s judgment propounded by the Court of Appeal and supported by the Supreme Court centred upon the judge’s failure to give proper weight to the overall impression which the CRD produced on the informed user, which was that of an animal with horns. This was considered to be significantly different to the Kiddee Case products, which either gave the impression of an animal with ears or an insect with antennae. Furthermore, the judge had not specifically addressed this point in his judgment. Although a judge should not be required to refer to every single factor to influence his decision, the Supreme Court noted that in a particularly full and detailed judgment, the absence of a certain significant point could be held to mean it had not been considered.
The lack of decoration
Secondly, Arnold J had failed to take into account the absence of any ornamentation on the surface of the registered design. Kitchen LJ in the Court of Appeal judgment held the view that the absence of such decoration in fact reinforced the impression of the design as that of a horned animal, and this was supported by Lord Neuberger. Magmatic argued that the question of whether the absence of decoration can be a feature of a design, and whether it was a feature of this particular design, should be referred up to the Court of Justice of the European Union (CJEU). This reference was refused, and in making such a refusal, Lord Neuberger’s obiter comments are particularly interesting. He stated that the minimalism and absence of decoration can, as a matter of principle, be a feature of a registered design and “it would be very curious if a design right registration system did not cater for it”. As a result, this statement will need to be carefully considered by applicants when assessing how much detail to include in a prospective application. Nevertheless, Lord Neuberger emphasised that if absence of decoration was a feature of a CRD, this did not mean that because an item had decoration or ornamentation, it could not infringe the CRD in question. It merely meant that the fact that an allegedly infringing design had ornamentation could be taken into account in making the comparison between the two designs.
The colour contrast
Finally, it was held that the trial judge had ignored the colour contrast visible in the CRD between the body and the wheels of the suitcase in assessing the scope of the claim. Arnold J stated that the application constituted a claim “evidently for the shape of the suitcase” alone, and that any decorations on the Kiddee Case could therefore be ignored when making a comparison between the two designs. The Court of Appeal disagreed, holding that the Trunki CRD was for not only the shape of the suitcase but the contrasting colours evident in the registered image, and that therefore both of these aspects should be considered when assessing the overall impression. The design holders were said to have made a deliberate choice in selecting to use light and dark shades in the image, and this choice could not be overlooked when interpreting the scope of the designs. The natural inference in selecting darker shades for certain areas of the image was that they intended those parts to be in a contrasting colour to that of the main body.
As a result, Lord Neuberger found in favour of the Court of Appeal in all three of their criticisms. In dismissing Magmatic’s claim, the court expressed sympathy and noted with regret that the concept behind the Trunki case was a clever and original one. Nevertheless, they concluded that the law behind Community Registered Designs existed to protect designs themselves, not ideas or inventions.
The Supreme Court’s dismissal of Magmatic’s appeal is significant for a number of reasons, primarily because of the detailed guidance Lord Neuberger’s judgment offered as to how CRD applications should be approached and subsequently interpreted by the courts.
Lord Neubeger made a number of comments as to the proper approach to CRD applications and their interpretation, including:
- The designer is in complete control of what is registered in his design application. He is entitled to “make a large number of different applications” and may “choose the level of generality at which his design is to be considered”. Emphasis was placed upon the large degree of freedom in selecting the scope of the application and, indeed, the fact that designs are relatively cheap to register.
- The Supreme Court’s message appeared to be that applicants should be making the most of this freedom to properly carve out the scope of the application to be as general or as specific as they require.
- When assessing the scope of protection afforded by a CRD, the question should focus on the interpretation of the registered application at hand and, in particular, the images included in the registration.
- An applicant is entitled to submit any images he chooses. CRD applicants are not permitted to include text to describe the design in their application, and they should therefore appreciate that the images submitted would exclusively identify the nature and extent of the monopoly of the design. As a result, they should be careful to ensure those images sufficiently represent their design application.
- Where a design is shown in colours, those specific colours are taken to be part of the design application. However, a black and white drawing or photo is taken to cover all colours.
- A CRD can claim an absence of decoration or ornamentation as part of its design.
- Line drawings are more likely to be interpreted as not excluding ornamentation than a computer-aided design image (CAD), and therefore applicants must consider the potential issues in registering a CRD using a CAD or photograph as they may be automatically deemed to be claiming a lack of ornamentation. If an applicant wishes to make the broadest claim possible, it may therefore be advisable to use a line drawing.
Designers and applicants will need to carefully consider the impact of the judgment and ensure that all future CRD applications are drafted with images that properly represent the scope of their design claims. Any detail included within the application could potentially limit the extent of the protection afforded, so the utmost care should be taken to ensure that applications are as general as they can be whilst still distinguishing the design from any prior art.
Despite these warnings, Community Registered Designs are still a relatively cheap way to protect designs in comparison with other IP registered rights, and applicants should make full use of this. For example, they may choose to register specific parts of their products in the future, or submit line drawings alongside more detailed CAD. Ultimately, the full impact of Trunki remains to be seen and it is likely we will see the discussion fleshed out in future cases in due course.