The UK Court of Appeal has issued a significant judgment on the scope of protection afforded by Registered Community Designs (RCDs) in Magmatic Ltd v PMS International Ltd. The case concerned a claim of infringement brought by Magmatic Ltd (Magmatic), creator of the popular children’s ride-on suitcase range, Trunki, against PMS International Ltd (PMS), which manufactured a discount variant of ride-on suitcases inspired by the Trunki range. The Court of Appeal held that the trial judge, Justice Arnold, had erred in principle by disregarding surface decoration and colour contrast in his global assessment of the similarities between the two products.
The Law
Under the Community Designs Regulation (6/2002/EC), RCDs protect the appearance of the whole or a part of a product resulting from its lines, contours, colour, shape, texture or materials of the product itself or its ornamentation. In order to avail of protection the design must be novel and have “individual character”.
A design will be held to have individual character if it creates a different “overall impression” on an informed user of the product compared to the existing design corpus. Similarly, the RCD will be infringed by any design which does not create a different overall impression.
The First Instance Ruling
Magmatic’s RCD The Trunki Mark I PMS’s Tiger Kiddee Case
Magmatic’s RCD consisted of six monochrome three dimensional images showing the Trunki design from various angles (an example of which is shown on the far left above). Justice Arnold, in the High Court, considered that as Magmatic’s RCD did not show any graphical designs on the surface of the suitcase, the RCD was for the shape alone and this should form the only point of comparison with the Kiddee Case. All other aspects of the Kiddee Case, such as the designs on its surface, should be ignored. On a shape-to-shape comparison, disregarding the Kiddee Case surface features, he found that PMS had infringed Magmatic’s RCD.
The Court of Appeal Ruling: Surface Decoration and Colour Contrast
The Court of Appeal held that Justice Arnold had erred in principle in his assessment of the overall impression created by the RCD. He failed to appreciate that the images conveyed the impression of a horned animal, not only because of the shape of the suitcase, but because there was no other surface design which might interfere with that impression. In this the court drew on its earlier finding in Samsung Electronics (UK) Ltd v Apple Inc which held that a lack of ornamentation was itself a feature of the Apple design.
The court held that the surface decoration of the Kiddee Case should have been taken into account as it “significantly affects how the shape itself strikes the eye”.
For instance, in the case of the Tiger case shown above, the stripes on its flanks and the whiskers on its nose plainly conveyed the impression of a tiger.
In addition, the Court of Appeal held that Justice Arnold had been wrong to disregard a colour contrast in the RCD between the wheels and the strap, on the one hand, and the body of the suitcase, on the other. The design had been registered in monochrome which meant that the scope of protection was not limited to particular colours, however the colour contrast was a “striking aspect of the design as a whole” and notably lacking in the Kiddee Case version. As such, PMS could rely on the lack of colour contrast to differentiate their designs.
Having determined that Arnold J. erred in his application of the legal principles, the Court of Appeal conducted its own assessment of the overall impression created by the two designs and held that the Kiddee Case did not infringe the RCD.
Comment
A rightsholder must consider carefully the representation of the design in an RCD registration as it is this which will fix the extent of its protection. As noted by the High Court in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd, if the design is depicted at too general a level, it runs the risk of being invalided by prior art; however, if the depiction is too specific it may not afford protection against similar designs.
In this instance, and in contrast to a line drawing, the three dimensional images submitted by Magmatic showed the suitcase from different perspectives and angles and showed the effect of light upon its surface. As a result, the court held that a more nuanced analysis of the design was appropriate as opposed to a simple shape comparison.
The full decision is available here.