In a decision that will no doubt disappoint many design right holders, Magmatic today lost its appeal to the UK Supreme Court in its case against PMS, who sell the competing "Kiddee Case".
The case concerned a Community registered design (CRD) for the well-known Trunki ride-on childrens' suitcase. The ultimate question in any design case under European Union harmonised law is whether the overall impression of the design of (or incorporated in) the alleged infringement is the same as that of the CRD. This first involves identifying what the overall impressions of the two designs are.
Trunki at the Court of Appeal
The Court of Appeal had overturned the first instance decision, where the judge had found infringement, holding that the overall impression of the CRD was of a "horned animal". While the author has concerns about characterising what is ultimately a design for a suitcase by reference to something quite different and indeed general in description (similar concerns apply to describing an air freshener by reference to a snake's head – see P&G v Reckitt Benckiser), one can see what the Court of Appeal was trying to do with that description of what the CRD depicted in terms of the shape aspects of the design. Importantly in this case therefore, the Court of Appeal came to that conclusion as regards the CRD based on the shape of the design depicted, and the fact there was no decoration shown in the CRD to alter that impression. For several reasons the Court of Appeal said that the Kiddee Cases in issue had different overall impressions, being of an insect and a non-horned animal respectively. Again, comparing the shape and other features of the CRD with the equivalent elements in the Kiddee Cases, and ignoring surface decoration, one can understand that conclusion, even if reasonable people might differ.
Controversially however, the Court of Appeal appeared to base its decision in part on the influence of the surface decoration of the Kiddee Cases. This caused significant comment among observers since it seemed clearly to contradict earlier case law which says that where a protected design is for a shape (eg, when it has no surface decoration), surface decoration on an alleged infringement is to be ignored. While there was some doubt as to whether the CRD was a pure shape design (the CRD did have several aspects which showed tonal contrast, such as the wheels, clasp and strap, and these were not reproduced in the Kiddee Cases), the "impression" given to many readers of the Court of Appeal's decision was that the surface decoration on the Kiddee Case – depictions of whiskers, eyes, spots, body tone etc - had played a large part in its finding of different overall impressions. The Court of Appeal seemed to describe the different overall impressions by reference to the applicable decoration on the Kiddee Cases. Again, as the CRD had no such decoration this seemed somewhat contrary to the established law.
Supreme Court decision
The Supreme Court today however upheld the Court of Appeal. It did so on the basis that the overall impression of the CRD was indeed of a horned animal, and that the Kiddee Cases had different overall impressions. While the judgment could be clearer on this point, it seems that its primary reason for upholding the Court of Appeal doing so was based on the overall impressions of the shapes. On the key issue of whether surface decoration was relevant to that consideration, the Supreme Court judgment appears to play down its importance, describing it as having "limited force" in this particular case. Nevertheless, the judgment suggests that surface decoration could be taken into account in deciding whether a shape design is infringed but possibly only to the extent that it would reinforce the overall impression of the underlying shapes concerned. It also hinted at there being more force in the point where surface decoration had been "positively distracting in nature": then it may have an effect on overall impression. It made this comment by reference to a CRD rather than an alleged infringement, which makes it somewhat unclear as to how "distracting" surface decoration should be taken into account in an alleged infringement. All of this may also be seen as somewhat controversial since it hints at a role for surface decoration in cases where there is none shown in a CRD.
A related point, which was run in argument, was whether the "absence" of surface decoration could be a positive feature of a design, as was suggested inApple v Samsung. It was suggested that if this point was indeed relevant to the Trunki appeal, there should be a reference to the Court of Justice of the European Union (CJEU). The Supreme Court refused to make a reference because the question wasn't in issue in the Trunki appeal (the court could decide without deciding the point, which in any event it considered was not raised by the Court of Appeal decision). Having said that, the Supreme Court did sayobiter that absence of surface decoration could be a feature of a CRD.
Overall therefore, the Supreme Court decision this morning in our view only provides limited clarity on the scope of protection of shape designs. The court seems to have held that surface decoration in an alleged infringement can be taken into account in some circumstances, although the limits of that remain unclear. In the Trunki case itself, the court has played down the relevance of the Court of Appeal's consideration of surface decoration.
What does come out from the decision, yet again, is the importance of care in filing design registrations, so as not to limit scope of protection unnecessarily, especially for shape designs. Merely filing photographs or even CAD representations with unnecessary tonal contrasts depicted, could unintentionally do just that. A hasty CRD filing could undermine its enforceability.
Full decision of the Supreme Court in PMS International Group Plc v Magmatic Ltd  UKSC 12 (9 March 2016): Supreme Court full decision PMS v Magmatic