PMS International Group Plc v Magmatic Ltd [2016] UKSC 12

Magmatic, maker of the Trunki ride-on children's suitcase, sued PMS for infringing its Community Registered Design through the similar Kiddee Case. The Supreme Court dismissed Magmatic's appeal, holding that the Court of Appeal correctly found no infringement given the different overall impression.

Facts

Magmatic Ltd owned Community Registered Design No 43427-0001 (the CRD) for a ride-on children’s suitcase, marketed as the ‘Trunki’. The CRD comprised six monochrome 3D Computer Assisted Design (CAD) images with grey-scale shading and tonal contrasts, showing a wheeled suitcase resembling a horned animal. The body and horns appeared in light grey, while the wheels, spokes, strap and strips appeared in black.

PMS International Group plc imported and sold the ‘Kiddee Case’, a ride-on children’s suitcase with broadly similar shape but bright colouring, surface ornamentation (such as spots, whiskers or stripes), eyes, antennae or ears (rather than horns) and covered wheels. Examples included an insect (ladybird) version and a tiger version.

Magmatic issued proceedings in February 2013 alleging infringement of the CRD. Arnold J found infringement at first instance. The Court of Appeal (Kitchin LJ, with Moses and Black LJJ agreeing) reversed, holding that the Kiddee Case produced a different overall impression. Magmatic appealed to the Supreme Court.

Issues

The central issue was whether the Kiddee Case produced on the informed user a different overall impression from the CRD, within the meaning of article 10(1) of Council Regulation (EC) No 6/2002. The appeal turned on whether the three criticisms made by the Court of Appeal of Arnold J’s judgment were justified:

The three criticisms

1. Whether the judge failed to give proper weight to the overall impression of the CRD as a horned animal.
2. Whether the judge wrongly ignored the effect of the lack of ornamentation on the surface of the CRD.
3. Whether the judge wrongly ignored the colour contrast in the CRD between the body and the wheels, strap and strips.

A subsidiary issue was whether the matter raised points of EU law requiring a reference to the CJEU under article 267 TFEU, particularly regarding whether absence of ornamentation could be a feature of a registered design.

Arguments

Magmatic argued that Arnold J had properly assessed the overall impression and reached a permissible conclusion that the Court of Appeal should not have disturbed. It contended that the CRD was a claim for shape alone, that absence of ornamentation could not as a matter of law be a feature of a registered design, and that issues should be referred to the CJEU.

PMS argued that the CRD created a distinctive impression of a horned animal, unadorned by surface decoration, with two-tone colouring distinguishing the wheels and strap from the body. The Kiddee Case, with its strong surface decoration making it appear as a ladybird, tiger or other creature with antennae or ears, gave a different overall impression.

The Comptroller General intervened solely to support the contention that questions should be referred to the CJEU.

Judgment

Lord Neuberger (with whom Lord Sumption, Lord Carnwath, Lord Hughes and Lord Hodge agreed) dismissed the appeal.

Appellate function

Lord Neuberger reiterated that appellate courts should be slow to interfere with a trial judge’s evaluative conclusion on infringement of a registered design, citing Lucasfilm Ltd v Ainsworth and Designers Guild Ltd v Russell Williams. The Court of Appeal could only reconsider the issue if it identified material errors of principle.

First criticism – horned animal appearance

The Court found the Court of Appeal correct: the overall impression of the CRD as a horned animal was clearly a key feature, yet Arnold J had not addressed it when assessing overall impression. Although Arnold J had mentioned ‘horn-like handles’, he appeared wrongly to treat the antennae and ears of the Kiddee Case as ‘horn-like’. Citing Lord Hoffmann in Piglowska v Piglowski, Lord Neuberger acknowledged that an appellate court should not be over-critical, but where a judge gives a careful and detailed judgment, the failure to mention a significant point may indicate it was overlooked.

Second criticism – absence of ornamentation

The Court held this point was really an aspect of the first criticism: the unornamented surface of the CRD reinforced the horned animal impression, while ornamentation on the Kiddee Case (spots, whiskers, stripes) detracted from any such impression and gave a completely different overall impression. The Court considered, obiter, that absence of decoration can in principle be a feature of a registered design, since minimalism may itself be an aspect of design. Whether it is such a feature in any given case depends on the proper interpretation of the images. CAD images, as opposed to simple line drawings, are more likely to be construed as excluding ornamentation. The Court referred to Procter & Gamble Co v Reckitt Benckiser, Samsung Electronics (UK) Ltd v Apple Inc, decisions of the Düsseldorf and Hague Courts of Appeal, and H & M Hennes & Mauritz BV v OHIM. The Court declined to decide whether absence of ornamentation was a feature of this particular CRD, finding it unnecessary.

Third criticism – two-tone colouring

The Court agreed that Arnold J had been wrong to treat the CRD as a claim for shape alone. The natural inference from the monochrome CAD images was that the body of the suitcase was intended to be in one colour, while the wheels, spokes, strap and strips were in a contrasting colour. This was supported by the writings of Dr Martin Schlötelburg of OHIM. Comparison with the allegedly infringing article therefore had to take account of colour contrasts, which were absent or different on the Kiddee Case.

Reference to the CJEU

The Court declined to refer any question to the CJEU. The criticisms involved the interpretation of particular images on a particular registered design rather than points of EU law. The only point of EU law (whether absence of ornamentation can be a feature of a registered design) did not arise on the appeal and was, in any event, not arguable.

Outcome

The Court of Appeal had been entitled to find that Arnold J had materially misdirected himself and to reconsider infringement for itself. Its conclusion that the Kiddee Case did not infringe was unimpeachable. Lord Neuberger noted he would have reached the same conclusion, observing with some regret that the appeal concerned a design, not an idea or invention.

Implications

Interpretation of CAD images

The judgment emphasises that representations submitted with a Community Registered Design application largely define the scope of protection. As Lord Neuberger explained, citing Dr Schlötelburg, including features in the representation means claiming them. A monochrome CAD image with tonal contrasts may be construed not as a claim to shape alone, but as a claim to shape together with contrasting colour tones. Applicants must therefore choose carefully between line drawings (which generally give broader protection limited to shape) and CAD images or photographs (which may narrow protection by indicating colour, surface and ornamentation).

Absence of ornamentation

Although strictly obiter, the Supreme Court accepted that absence of ornamentation can, in principle, be a feature of a registered design, supporting a minimalist or simple aesthetic as a protectable aspect of design. Whether it forms part of a particular design depends on the interpretation of the images, given that verbal descriptions are precluded by article 36(3) of the Principal Regulation and article 4(1) of the Implementing Regulation.

Appellate review

The decision reinforces that appellate courts will only interfere with first instance evaluative judgments on design infringement where there is a material error of principle, but also confirms that omission of significant features from a detailed judgment may justify the inference that the judge overlooked them.

Practical significance

The decision is significant for designers and their advisers. It highlights that submitting CAD images with tonal contrasts may unintentionally narrow protection. Designers seeking broad protection for shape alone should consider using simple line drawings, while those wishing to claim particular colour, ornamentation or surface features should select representations accordingly. Multiple applications at different levels of generality may be advisable, as cost and procedural simplicity are intended objectives of the registration system.

Limits of the decision

The Court did not definitively resolve whether the absence of ornamentation was a feature of the CRD in this case. Nor did it lay down rigid rules; each registered design must be interpreted in its own context. The judgment also recognises that a design’s commercial success and originality of concept (as with the Trunki) cannot extend the protection beyond what the images submitted at registration actually claim.

Verdict: Appeal dismissed. The Supreme Court upheld the Court of Appeal’s decision that the Kiddee Case did not infringe Magmatic’s Community Registered Design, as it produced a different overall impression on the informed user. No reference to the CJEU was made.

Source: PMS International Group Plc v Magmatic Ltd [2016] UKSC 12