Practical Lessons from Magmatic versus PMS

December 01, 2014

Now the dust has settled on the English Court of Appeal’s ruling that PMS’s Kiddee Case does not infringe Magmatic’s Community registered design of the Trunki suitcase, we consider what practical lessons can be learnt from the ruling.

Magmatic’s Trunki suitcase has been a huge commercial success, and perhaps unsurprisingly inspired a competitor, PMS, to create a rival product called the Kiddee Case.

The design of the Trunki is protected by a Community registered design (CRD). Magmatic brought court proceedings against PMS for infringement of the CRD, and also certain aspects of UK unregistered design right in the Trunki.

The design of the Trunki was considered to be a significant departure from earlier suitcase designs which would be known by an informed user of suitcases. Accordingly, the CRD was in theory therefore entitled to a broad scope of protection.

At the English High Court, Mr Justice Arnold considered that the Trunki and the Kiddee Case create the same overall impression, and therefore the Kiddee Case was held to infringe the CRD.

The Kiddee Case was also held to infringe certain aspects of UK unregistered design right which dealt with specific parts of the Trunki rather than the whole of the article. These aspects were considered to have been intentionally copied.

PMS appealed the High Court’s decision that the Kiddee Case infringed Magmatic’s CRD but not the finding that it infringed certain aspects of UK unregistered design right in the Trunki.

Unlike the High Court, the Court of Appeal took account of the surface decoration on the Kiddee Case as an aspect of the overall impression of the product, and said that the High Court was wrong to ignore such surface decoration.

In particular, it was considered that because the Kiddee Case included stripes on its flanks and whiskers on either side of its nose this immediately conveyed to the informed user that the Kiddee Case is a tiger with ears, rather than a horned animal as shown in the CRD.

Furthermore, the Court of Appeal also considered the colour contrast between the wheels and the body of the CRD, which was not considered by the High Court. The wheels and the body of the Kiddee Case are the same colour such that there is no colour contrast. The Court of Appeal considered the colour contrast to be a striking feature of the design, and therefore a significant difference.

In view of the above, the Court of Appeal found that the overall impression created by the two designs is in fact very different, and therefore infringement of the CRD by the Kiddee Case should not be held.

What can we learn?

The finding of non-infringement at the Court of Appeal arose largely from the fact that the surface decoration on the Kiddee Case resembles a tiger rather than a horned animal as per the CRD, and the wheels on the Kiddee Case are the same colour as its body. This aspect of the judgment is surprising, especially given the finding that the CRD enjoyed a relatively broad scope of protection.

In the light of this decision, it would appear that simple line drawings make for the most effective CRDs, rather than 3D images showing colour contrast which appears to narrow the scope of protection provided by a registered design.

The courts appear to be construing registered designs reasonably narrowly, and it is therefore perhaps sensible to register multiple designs of a product, or parts of the product, covering variations which could reasonably be made to the product. For example, Magmatic may have been in a stronger position if they had also registered designs for the Trunki including ears instead of horns, and including various types of surface decoration to resemble different animals.

A competitor would then have a more difficult task to design a similar product which does not infringe at least one of the registered designs. There are economies of scale in official fees for filing several designs in the same field on the same day, allowing designers to file various parts of their product as separate designs in a relatively cost-effective way.

UK unregistered design rights seem to be more successful in the courts than registered design cases, and it is worthwhile therefore keeping good dated records of the development of a particular design to prove ownership of the design right, and to prove when the design right began.

If you have any questions concerning the above, please get in touch with your usual contact at Swindell & Pearson Ltd or Simon Foster at [email protected]. Simon is based in the East Midlands, at our head office in Derby.