The case of PMS International Ltd v Magmatic Ltd [2016] UKSC 12 has acted as a warning for those seeking to protect their registered designs after the Supreme Court found that the Kiddee Case does not infringe the Trunki Community Registered Design.
Although the Kiddee Case was inspired by the Trunki suitcase, registered design law protects the design of a product, not the idea or concept behind it. The Trunki registered designs did not include the surface detail on the suitcases and the courts could not therefore consider this aspect when deciding whether or not there had been an infringement.
The case has been widely reported on for its potential impact on the enforcement of registered designs. Magmatic Ltd designed the popular Trunki children’s sit-on suitcase, registering the design as a Community Registered Design (“CRD”). PMS International Ltd launched the Kiddee Case, which Magmatic argued infringed its CRD as the two are similar sit-on suitcases for children.
The main issue here was whether the “overall impression” given by the Kiddee Case was the same as that given by the Trunki suitcase. The Supreme Court held that the overall impression given by the Trunki is of a horned animal, and the overall impression given by the Kiddee Case is of an insect with antennae, or an animal with ears. The Supreme Court held that Magmatic had failed to consider the impact of the colour contrast in the Trunki CRD, as its body was shaded grey and its wheels black on the CRD. The lack of surface decoration in the CRD for the Trunki was also relevant, as the distinctive markings on the case were consequently not protected and could not be included when considering the overall impression of the design.
It was decided after considering the above that the Kiddee Case and the Trunki did create different overall impressions, and that the Kiddee Case therefore did not infringe the Trunki CRD. This decision has caused some understandable concern amongst people regarding the “uncertainty” of the impact on future registered design disputes. Many companies and individuals with similar interests supported Magmatic’s appeal against PMS International with a campaign of #ProtectYourDesign and have likewise been disappointed by the Supreme Court’s decision.
Whilst the concern of those companies and individuals is understandable, it is important to note, as the Supreme Court mentioned in their judgment, that “Design Right is here to protect designs, not ideas”. Although the concept of an idea and of a design can sometimes overlap such as in patent law, in design law they are distinct. The Supreme Court had sympathy for Magmatic in this case as the suitcase is clearly innovative, but unfortunately the nature of their CRD means that the Kiddee Case did not infringe the Trunki registered design.
What might the case mean for registered design in the future?
The Supreme Court recognised in their judgment that it might be best practice for a series of designs to be registered in the future, ranging from simple shape designs to detailed designs which incorporate unique features and surface decoration, to offer maximum protection to the registrant. They also suggested that a line drawing might be preferable to the routine method of using CAD (Computer Aided Drawing) drawings. This is because a CAD drawing is more likely to be interpreted as deliberately omitting surface decoration if not included in the CRD than a line drawing.
It is also important to ensure that any images submitted to be registered designs do not accidentally limit the potential scope of the protection, in this case by using contrasting colours in the design that were irrelevant. If a feature or colour contrast is included in the design, it will be assumed that this feature is intended to be part of the CRD.
In summary, the case reminds us of the importance of a properly drawn registered design and of the continuing difficulty of enforcing registered design rights.
If you wish to discuss any of the issues raised in this article or would like assistance with updating your terms of business please contact Rebecca Anforth, Head of Intellectual Property, on 01872 226999 or rebecca@murrellassociates.co.uk or Melanie Brown, author of the article. For more information on our new Community Design Right package please contact Rebecca Anforth!
The information provided in this article is for general information purposes only and does not constitute legal or other professional advice and cannot be relied upon as such. Any law quoted in this article is correct as at 18 April 2016. Appropriate legal advice should be sought for specific circumstances before any action is taken. Copyright © Murrell Associates Limited, April 2016.
