In Magmatic Ltd v PMS International Ltd  EWHC 1925 (Pat) (11 July 2013) Mr Justice Arnold held that PMS International Ltd ("PMS") had infringed registered Community design number 43427-0001 ("the RCD"), some of Magmatic Ltd ("Magmatic")'s design rights and Magmatic's literary copyright in its safety notice. Magmatic appealed to the Court of Appeal on the grounds that the judge fell into error in finding infringement of the RCD in that he had wrongly interpreted the RCD and improperly excluded from his consideration various aspects of the design of Magimax's product. In Magmatic Ltd v PMS International Ltd  EWCA Civ 181 (28 Feb 2014) the Court of Appeal (Lords Justices Moses and Kitchin and Lady Justice Black) allowed the appeal.
Magamatic makes and sells ride-on suitcases for children under the trade mark Trunki. Photographs of one of the products in the Trunki range appear in the middle column above. PMS imports and sells similar products under the trade mark Kiddee Case. Photos of a suitcase in the "Kiddies Case" range appear in the right hand column. The left hand column consists of representations of the RCD which Magmatic had registered at the Office for Harmonization in the Internal Market ("OHIM") with effect from the 20 June 2003.
Art 19 (1) of the Community Design Directive (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1) provides:
"A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes."This provision begs the question of what precisely is meant by the "Community design" and that question is answered by art 10 (1) which provides that "the scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression." The following paragraph adds that
"In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."The Proceedings
On 18 Feb 2013 Magmatic sued PMS for infringement of its RCD, design rights and literary copyright. In a typically thorough analysis the judge considered the identity of the informed user, the existing design corpus, design freedom, the effect of design freedom on the scope of protection and the effect of differences between the registered design and the design corpus on the scope of protection. At paragraph  he decided that the RCD was entitled to a broad scope of protection as it represented a substantial departure from the design corpus and that the designer had considerable design freedom, Relying on Procter & Gamble Co v Reckitt Benckiser (UK) Ltd  FSR 8,  ECDR 3,  EWCA Civ 936,  Bus LR 801 where Lord Justice Jacob had said at  that "the proper comparison is with the shape of the alleged infringement" and that "graphics on that (or on the physical embodiment of the design) are irrelevant" his lordship disregarded the surface decoration on PMS's suitcases.
The Court of Appeal held that Mr Justice Arnold erred in principle in approaching the matter as he did and that he was wrong to disregard all of the decoration on the Kiddee Case. As to the Court of Appeal's previous decision in Procter & Gamble Lord Justice Kitchin said at paragraph  that Lord Justice Jacob's observation was entirely right in the context in which it was made but it did not apply to every case. In particular, it did not apply to cases where surface decoration (or the absence thereof) was a feature of the design as was the case in Samsung Electronics (UK) Ltd v Apple Inc  EWCA Civ 1339 (18 Oct 2012). In disregarding surface decoration, Mr Justice Arnold had fallen into error in two respects:
"The [RCD] consists of six monochrome representations of a suitcase. These representations are not simple line drawings, however. Rather, they are computer generated three dimensional images which show the suitcase from different perspectives and angles and show the effect of light upon its surfaces. Further and importantly, the suitcase looks like a horned animal with a nose and a tail, and it does so both because of its shape and because its flanks and front are not adorned with any other imagery which counteracts or interferes with the impression the shape creates. As [counsel for PMS] submits, the [RCD] is, in that sense, relatively uncluttered and it conveys a distinct visual message. Here then the first of the judge's errors can be seen: he failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal."Secondly, although the judge was right to find that as the representations of the design in the left hand column were in monochrome the design was not limited to particular colours, he had been wrong to ignore the distinct contrast in colour in the representations between the wheels and the strap, on the one hand, and the rest of the suitcase on the other. Moreover the wheels and straps of the defendant's cases were the same colour as the rest of the structure. Because of those differences the Kiddies' Cases did not infringe the RCD.
This is an important decision on the scope of registered and registered Community design protection. Its guidance on how to analyse representations of registered designs is perhaps comparable to such cases as Kirin-Amgen, Improver and Catnic on the construction of patent claims. In anchoring the scope of design protection to what is visible in the representation of the design, this case places bounds on what can be claimed in a registered design. As Parliament is about to criminalize registered design infringement for the first time in the long history of design registration, such clarity is to be welcomed. If you want to discuss this case or have any question on design law, call me on 020 7404 5252 during office hours. You can also tweet me, write on my wall or send me a message me through my contact form, G+, Linkedin or Xing.