Supreme Court upholds Court of Appeal in Trunki

The judgment of the Supreme Court in PMS International Group Plc v Magmatic Ltd. [2016] UKSC 12 has attracted a lot of flak over the last 24 hours much of it unjustified. According to the BBC website, Mr Robert Law, the founder of the Magmatic Ltd. which supplies Trunki suitcases, predicted chaos after the Supreme Court upheld the Court of Appeal's decision that I discussed in Registered Community Designs: Magmatic Ltd v PMS International Ltd on 4 March 2014. In that decision the Court of Appeal allowed an appeal against Mr Justice Arnold's finding that the Kiddee Cases shown below had infringed Magmatic Ltd.'s registered Community design the representation of which appears above (see Trunki loses ride-on animal suitcase court case 9 March 2016 BBC).

While I have every sympathy with Mr Law who must have spent enormous sums on fruitless litigation and will no doubt face more expense after detailed assessment of the other side's costs there would have been far greater uncertainty in registered design law had the case gone the other way.  The purpose of that law is to confer a monopoly of designs that are new and have individual character and not to protect bright ideas as such. It is often forgotten that intellectual property law is intended to strike a balance between several conflicting public imperatives of which incentive to create and innovate is only one. There has been a tendency over the years to criminalize intellectual property infringement but monopolies and exclusive rights restrict competition to the detriment of consumers. Claiming the protection of the law for economic activity where such protection is unjustified at the expense of the public is no more moral in my book than infringing an intellectual property right where such right can be justified.

In the last 30 years or so the balance between the conflicting public interests has tilted decidedly in favour of those seeking more protection for the so-called "creative industries" as governments around the world have yielded to the pestering of well-funded lobby groups and nowhere is that more true than in design. It is far too easy to register a design in this country and the rest of the EU as there is no substantial examination of applications by the IPO or OHIM with the result that there is nothing to stop unmeritorious designs appearing on the register. One of the very few things that could be said for Brexit is that we would no longer be bound by the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001on Community designs (OJ EC No L 3 of 5.1.2002, p. 1) and Parliament would be free to repeal those amendments to the Registered Designs Act 1949 that were required by the Design Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 28 - 35). It would be an opportunity to replace our law with something along the lines of the American design patent except that the public should have the added protection of a thorough prior art search by the Registry and an opportunity to third parties to oppose the application before it is granted.

The judgment of the Supreme Court in the Trunki case delivered by Lord Neuberger and the key to understanding their Lordships' reasoning appears at para [57]. After expressing regret that he had to dismiss the appeal as "the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever" and that the defendant had "conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available" he explained that the appeal the appeal was concerned not with an idea or an invention, but with a design.

Lord Neuberger summarized the issues that the Supreme Court had to decide at para [26] of his judgment:

"the arguments of substance before us have been limited (and rightly so) to the questions whether the Court of Appeal’s criticisms of Arnold J’s approach, as set out in paras 41-42 and 47-48 of Kitchin LJ’s judgment, were correct. Subject to one point, if we consider that those criticisms were justified, then Magmatic’s appeal should be dismissed and the Court of Appeal’s order upheld; and if we consider that they were unjustified, Magmatic’s appeal must be allowed and Arnold J’s order restored."

I discussed the Court of Appeal's criticisms in my case note on the decision of the Court of Appeal:

"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 & GambleLord Justice Kitchin said at paragraph [37] 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 [2012] 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."

Between paras [37] and [54] Lord Neuberger considered each of the Court of Appeal's criticisms  of Mr Justice Arnold's judgment and concluded at para [55] that they were fair.

"The effect of this analysis is that the Court of Appeal was right to hold that the design claimed in this case was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product."

Having found that the trial judge had erred the Court of Appeal was entitled to consider the matter anew and substitute its own judgment for that of the court below. As the Supreme Court could not fault the Court of Appeal's approach in the matter it could not disturb its judgment.

Trunki and the Comptroller had requested a reference to the Court of Justice of the European Union. Lord Neuberger dealt with that request very shortly at para [59]:

"Despite the fact that the Comptroller General supports the contention that there should be a reference, I do not consider that this appeal raises any issue which should be referred to the CJEU. All the criticisms made by the Court of Appeal raise the question of how to interpret particular images on a particular Community Registered Design. I do not consider that these criticisms raise a point of EU law, or indeed a point which is suitable to be referred to the CJEU. If we were to refer such an issue to the CJEU, it appears to me that they would say that we should interpret the images on a Community Registered Design by reference to how it would appear to a reader in the light of the terms of the Principal Regulation, the Implementation Regulation and the practice of OHIM."

He accepted at [60] that the contention that absence of ornamentation cannot be a feature of an RCD raised a point of EU law but did not refer it to the CJEU because it did not arise on the appeal and if it had he would have considered it to be unarguable:

"Minimalism can self-evidently be an important aspect of a design just as intensive decoration can be. It would be extraordinary if absence of ornamentation could not be a feature of a design, and, unsurprisingly, no authority has been cited to support such a proposition. On the contrary."

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