E-News No.46

E-News No.46

Supreme Court considers scope of Community Registered Design for the first time

by Kirsty O’Conner (Reed Smith – UK)

Magmatic Limited (Appellant) v PMS International Limited (Respondent) [2016 UKSC 12]

The UK Supreme Court has upheld the Court of Appeal’s judgment, and found that Magmatic’s registered Community Design Right (“CDR”) has not been infringed. These decisions run contrary to the court of first instance’s finding of infringement (the first instance finding of infringement of a UK design right was not the subject of an appeal).

Background

Having developed and won a prize for the design of a “ride-on” suitcase for children called the “Rodeo” in 1998, Robert Law registered an updated version of the suitcase design in 2003 using a grey-scale CAD drawing of the Trunki product.

Magmatic has manufactured and sold children’s ride-on suitcases since 2004 under the “Trunki” trade mark. Mr Law also appeared on a UK TV programme, Dragon’s Den, with the Trunki product.

Magmatic alleged infringement of its CDR by PMS, which was importing and selling the Kiddee Case ride-on children’s suitcases in the UK and Germany. Magmatic sought damages and an injunction against PMS.

Before the courts

The case first came before the High Court in 2013, where Arnold J held that the Kiddee Case design did not produce on the informed user (the “parent, carer or relative of a three to six-year-old child,”) a different overall impression from the CDR, and therefore its design infringed the CDR. Ultimately, Arnold J concluded that the CDR was “evidently for the shape of the suitcase” and that the Kiddee Case infringed the CDR.

PMS appealed in February 2014. Kitchen LJ upheld the appeal and found there had been two errors in principle at first instance:

  1. In relation to the finding that shape alone formed the basis of the CDR, Kitchen LJ held that proper weight had not been given to the CDR’s specific overall impression of an animal with horns. By contrast, the Kiddee Case designs appeared to be either of an animal with ears or an insect with antennae – creating significantly different impressions.
  2. The judge at first instance had overlooked the effect of the colour contrast of the gray tones in the registered CAD drawings. The effect was significant as it informed the viewer of the 3D nature of the CDR. Shades of light gray depicted the contours of the body, while key features such as wheels and strap stood out in darker gray. The CDR was not merely for a shape, but for a shape in contrasting colours.

Magmatic appealed, but the Supreme Court concluded that the appellate court’s criticisms had merit. Delivering a unanimous decision, the Supreme Court upheld the Court of Appeal’s judgment that the Kiddee Case had not infringed the CDR.

Interestingly, both Magmatic and the Comptroller General of Patents, Designs and Trade Marks requested – during the course of the case – for questions to be referred to the CJEU regarding the criticisms raised concerning the absence of surface decoration and colour contrast. These requests were refused by the Supreme Court on the basis that the issues were not a point of EU law and were not suitable for referral because the comments made about the absence of surface decoration were obiter.

Comment

While the Supreme Court judgment may have ended the debate in relation to “Trunki,” this case is likely to spark debate as it held that the Court of Appeal had not resolved the question of whether the absence of ornamentation was a feature of the CDR. It was not necessary for Magmatic’s appeal to decide the point so it left the issue open. However, it noted that there were “powerful practical arguments against such a conclusion”. We shall have to see how this issue is handled in the future.

  1. [2014] EWCA Civ 181
  2. [2013] EWHC 1925 (Pat)