PMS International Group Plc v. Magmatic Limited (Appellant), 2016 UKSC 12
In a decision issued March 9, 2016, the Supreme Court of the United Kingdom rejected the claim of plaintiff, Magmatic Limited (“Magmatic”), against PMS International Group Plc (“PMS”), alleging infringement of one of Magmatic’s registered European Community designs. The basis for Magmatic’s claim was its registered Community Design for a ride-on suitcase for children, in the shape of an animal, which it markets as the “Trunki.” PMS offers a competing children’s ride-on suitcase, also shaped like an animal, called the “Kiddee Case.”
Under European Council Regulation No. 6/2002 governing Community designs, a “design shall be protected by a Community design to the extent that it is new and has individual character.” Protection is granted to the appearance of the design, in whole or in part, that “result[s] from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.”
Magmatic’s founder, Robert Law, won a prize in 1998 for his design for a ride-on children’s suitcase, which featured four wheels and a handle, called the “Rodeo.” Magmatic registered an updated version of the Rodeo in 2003 as Community Design No. 43427-0001 (“the Design”). Magmatic’s Design consisted of six monochrome images created using a computer assisted design (CAD) program. Two of the six images are shown below.
Magmatic’s Registered Design No. 43427-0001 (the “Design”)
Today, Magmatic manufactures and markets ride-on children’s suitcases under the name “Trunki” in a variety of colors and styles. Magmatic’s first Trunki products closely resembled the Design, without additional ornamentation other than coloring. Subsequent Trunki models have included ornamentation such as stripes, spots, noses, and whiskers. Magmatic has also sought to protect some of these more elaborate Trunki designs by registering them as Community designs.
Magmatic filed a complaint against PMS in 2013, upon discovering that PMS had begun selling a line of children’s ride-on luggage called the “Kiddee Case.” PMS had developed the Kiddee Case when it noticed the successful Trunki design and realized there was no discount model on the market. Magmatic claimed that the Kiddee Case infringed Magmatic’s registered Design No. 43427-0001, as it did not “produce on the informed user a different overall impression” from Magmatic’s Design.
Kiddee Case offered by PMS
The trial judge noted that the three most important elements in a case involving registered designs are: (1) the registered design; (2) the accused object; and (3) the prior art, and that the paramount consideration is what the designs at issue look like. Applying this standard, the trial court held that Magmatic’s Design is protectable and, notwithstanding differences between the designs, the Kiddee Case infringes the Design. Crucially, the trial court held that Magmatic’s Design is for a particular shape in the form of an animal. Accordingly, the relevant feature of the Kiddee Case was its shape, which the court considered similar, while the ornamental markings on the Kiddee Case were deemed irrelevant.
The trial judge held that the scope of the Design was somewhat reduced by the prior art, namely, Robert Law’s previous “Rodeo” design that was disclosed in 1998. Nevertheless, the court believed that the “overall impression” of the Kiddee Case shares with the Design “the slimmer, sculpted, sophisticated, modern appearance, prominent ridge and horn-like handles and clasps” which resemble “the nose and tail of an animal,” but which the Rodeo lacked.
Court of Appeal
The Court of Appeal reversed the decision, holding that the trial judge had made two material errors. First, the judge failed to fully consider the nature of Magmatic’s Design. In doing so, the judge overlooked the fact that the shape of the Design as a whole resembles a “horned animal,” while the Kiddee Case’s overall impression is quite different, resembling an insect with antennae or an animal with ears. Related to this first criticism, the Court of Appeal held that the trial judge failed to consider the impact of the designs’ surface ornamentation on their overall visual impression. Specifically, the impression created by the shape of the Kiddee Case is “clearly influenced” by its ornamental features, such as the coloring of the body and spots on its sides, resulting in the impression of an animal—but not one with horns.
Second, the appellate court held that the trial judge failed to take into account “the color contrast” between the wheels of Magmatic’s Design and the body of the Design, as shown in the CAD renderings. The appellate court deemed this contrast a “fairly striking” feature of the Design.
Decision of the Supreme Court
Magmatic appealed, and the Supreme Court agreed that the trial court materially erred in failing to fully consider: (1) the overall impression created by Magmatic’s Design of a horned animal; (2) the impact of the presence and absence of ornamentation on the overall impression of the Design and the Kiddee Case; and (3) the significance of the color contrast of the Design.
(i) Horned Animal Appearance
The Supreme Court agreed with the Court of Appeal’s assessment that, although the trial court conducted a detailed analysis of the similarities and differences between Magmatic’s Design and the Kiddee Case, it failed to mention or identify the horns of the Design, and more particularly its impression of a “horned animal.” The Supreme Court noted that, where a judge has offered a “full and careful judgment,” it can be concluded that the “failure to mention a significant point means that he has overlooked it.” The failure to articulate the Design’s horned animal impression was all the more significant, as it is the “overall impression” of the Design that is the central inquiry of an infringement case.
(ii) Ornamentation or Lack Thereof
The Supreme Court held that the second criticism of the trial judge’s analysis was in fact an extension of the first, namely, that the lack of ornamentation on the Design supported the impression of an animal with horns, while the ornamentation on the Kiddee Case suggested animals with ears or antennae. The Supreme Court observed that, while the appellate court’s criticism was correct, “it amounted to a relatively minor point which simply reinforced the first criticism.”
Magmatic claimed that the case should be referred to the Court of Justice of the European Union, arguing that the issue of whether absence of decoration could be a feature claimed by a registered design was a point of EU law that had not been determined (or that left room for reasonable doubt). The Supreme Court disagreed, stating in dicta that lack of ornamentation can clearly be a feature of a registered design, citing case law and noting that it would be quite strange if a design right system did not “cater” to simplicity or minimalism, which are “notorious” design elements.
Further, the Court held that whether the lack of ornamentation in Magmatic’s Design is an aspect of the specific right claimed turns on the analysis of the images submitted, and not on a general principle of EU law. The Supreme Court noted that a line drawing (as opposed to a CAD rendering) is more likely to be interpreted as not excluding ornamentation, given that the broadest claims are typically obtained by line drawings. Ultimately, however, the Supreme Court decided it was unnecessary to determine whether Magmatic’s Design specifically claims a lack of ornamentation, as this did not alter the determination of non-infringement.
(iii) Two-Tone Coloring of Magmatic’s Design
The Supreme Court agreed that the trial court erred in failing to consider the two-tone nature of Magmatic’s Design. PMS could not rely on the colors of its products as a distinguishing feature, given that Magmatic’s Design was filed in black and white (and thus was presumed to cover all colors). However, the Court noted that the Design consists of a grey body, with a black strip on its front, a black strap on top, and black wheels. In particular, the Court held that other parts of the Design (such as the clasps and the horns) were not shown in a contrasting color, and thus there was no logical connection between color and function. The Court concluded that the trial court was obligated to take into account the coloring of the Kiddee Case and compare it with the two-tone monochrome coloring of the Design.
Because the Court of Appeal determined the issue of infringement using the correct law, the Supreme Court held that it should be slow to “interfere” with the appellate court’s judgment of non-infringement. The Supreme Court added that it would likely have reached the same conclusion. Accordingly, it allowed the decision to stand.
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Registered Community designs are intended to be inexpensive and reasonably easy to obtain. However, this decision makes clear that owners of registered Community designs will need to think ever more carefully about the images they submit for registration, and the impact that their submissions will have on the scope of protection. The UK Supreme Court and Court of Appeal have signaled that the scope of protection for registered Community designs is quite narrow, particularly for those designs that are represented in CAD renderings and that contain even moderate levels of detail. However, an attempt to obtain broader protection by submitting less-detailed images may create its own challenges, in terms of distinguishing one’s new design from the existing design corpus.