Case Comment: PMS International Group plc v Magmatic Ltd  UKSC 12
23 Wednesday Mar 2016
The Supreme Court has dismissed an appeal filed by Magmatic Ltd seeking to enforce a Community Registered Design (CRD) in its popular children’s ride on suitcase, the TRUNKI®. The decision confirms that a rival ride-on suitcase created by PMS International Ltd does not infringe Magmatic’s CRD because, even though it copied Magmatic’s idea, it creates a different overall impression to the CRD.
The decision is notable for stressing the importance of the images which make up a CRD. Lord Neuberger, giving the leading judgement, highlights that “it will almost always be the images which exclusively identify the nature and extent of the monopoly which is claim[ed]“.
A Case Preview was published on this blog here.
The appeal to the Supreme Court
The Supreme Court chose to review the appeal under three separate headings.
1. The overall impression conveyed by the CRD
The Supreme Court agreed that the CRD’s overall impression was not just “animal-like” but that of a horned animal. Lord Neuberger also considered the circumstances in which it is appropriate for an appellate court to conclude that a judge has failed to fully consider a point, concluding that:
“When a judge has given a full and careful judgment, conscientiously identifying and specifying a significant number of points which weigh with him, an appellate court can properly conclude that his failure to mention a significant point means that he has overlooked it. That conclusion is particularly valid here, given that the point in question is more significant than many of the points which the judge mentioned, because it goes to the overall impression of the image rather than detailed features, and it is with the “overall impression” with which one is ultimately concerned…”
Accordingly, the Court of Appeal was correct to criticise the trial judge for omitting this important aspect of the design from his consideration.
2. The absence of decoration
In Samsung v Apple  EWHC 1882 (Pat) lack of surface decoration or “extreme simplicity” was held to be a striking aspect of Apple’s CRD for the iPad. As such, the inclusion of surface decoration on Samsung’s otherwise similar design was an important point of differentiation between the two.
Magmatic contended that the Court of Appeal decision had made the same determination in respect of the CRD, thus amplifying the impact of the surface decoration on the accused product. Lord Neuberger disagreed, holding that in fact the Court of Appeal had merely pointed out that the lack of any ornamentation was a factor contributing to the overall impression of the CRD. The Supreme Court found this was a relatively minor aspect of the Court of Appeal’s decision and not – as Magmatic contended – a standalone point. The Supreme Court therefore preferred not to rule on whether the Magmatic CRD specifically claimed a lack of surface decoration, as it was not necessary to determine the outcome of the appeal. Lord Neuberger also refused to refer this point to the CJEU – the law was clear, and the point was not at issue in the proceedings.
3. The effect of the two-toned colouring of the CRD
Magmatic argued that the CRD should cover the shape of the product in any colour combination because it was filed in monochrome. However, unlike the position in Procter & Gamble  EWCA Civ 93, Magmatic’s CRD was illustrated not by line drawings, but by images taken from computer aided design software. The images show certain parts of the design (including its wheels and strap) in darker shades than the main body. Magmatic contended that this was simply because the design software shows components which are removable or replaceable in a different shade. However, the Supreme Court disagreed, confirming that these differences in shade should be interpreted as a feature of the design.
Accordingly, the design was in fact limited to a shape in a particular colour configuration and as a result, when comparing the CRD and the accused product it was correct to take into account the differences between the colour contrasts in the CRD and the lack of corresponding colour contrasts on the PMS product. Lord Neuberger placed particular stress on the fact that a CRD has to be understood on the basis of the filed images comprising the design, quoting Dr Martin Schlötelburg, the co-ordinator of OHIM’s Designs Department, the decision reiterates [at 31]:
“the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them”
The Supreme Court found no faults of law with the Court of Appeal decision, and accordingly would not overturn it. For completeness, the other factors leading to the Court of Appeal’s finding of non-infringement were that the accused product: (i) had a different, and asymmetric profile to the CRD; (ii) lacked a cutaway area along the top of the case; (iii) had filled-in wheel arches; and (iv) took a softer and more rounded form.
This decision highlights that the scope of protection afforded by a registered design is not necessarily commensurate with the inventiveness of the corresponding product, and demonstrates the importance of accurate representations of the CRD. Designers would be well advised to remember that registered design law is intended to protect against exact or very similar copies of the appearance of, and not the ideas behind, products.
Two fact-specific factors severely limited the scope of protection that Magmatic’s CRD conferred:
- Magmatic released a prototype model of its ride-on suitcase 5 years prior to filing the CRD. This meant that some features of the CRD were not unique, narrowing the scope of its overall impression. This allowed PMS to run a ‘squeeze’ argument – that its product was less similar to the CRD than the CRD was to the earlier design, so could not infringe.
- The images that dictate the features of the CRD communicated that the design did not cover just the shape of the product, but covered that shape in combination with specific colour contrasts. This created a further point of difference between the CRD and the alleged infringement.
In obiter, Lord Neuberger suggests (at paragraph 46 of the Supreme Court decision) that line drawings are most appropriate for CRDs claiming shape only. However, innovators and practitioners should be cautious of interpreting this as offering a guarantee that such designs will be enforceable against any similar shaped future products, regardless of their surface decoration.
The Magmatic decisions place greater emphasis on considering designs in their context than the decisions that precede them. Kitchen LJ states (at 47 of the Court of Appeal judgement):
“a global assessment of the CRD and the accused designs requires a consideration of the visual impression they each create and in so far as that impression is affected by the features appearing on their front and sides, it seems to me those other features must be taken into account…it was, in my judgment, wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives. At least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears..”
This passage (which is reproduced at 19 in the Supreme Court judgement) can be read in two ways and potentially represents a significant shift in thinking. Controversially, it suggests that in certain contexts (even in certain cases where the CRD is represented by a line-drawing) surface decoration should not be entirely disregarded if it influences the overall impression of the accused product. This is certainly consistent with the reasoning in Samsung v Apple  EWHC 1882 (Pat), which considered the surface decoration on the accused product, despite that Apple’s CRD for the iPad was depicted in line drawings.
A less controversial option is that the passage above was made only because the CRD at issue was found to include a claim for a colour contrast. However, immediately after the quoted passage, Kitchen LJ describes the trial judge’s failure to consider the colour contrast as “another matter which the judge ought to have taken into account“. This seems to weigh against a conclusion that the colour contrast point influenced the quoted paragraph above.
At the Supreme Court, Lord Neuberger did not pass comment on the correct interpretation of the passage, which perhaps suggests that the less controversial (and latter) interpretation is correct. However, if the first interpretation is correct, this casts doubt on the applicability of Jacob LJ’s finding in Procter & Gamble that where a registration is “evidently for a shape… The proper comparison is with the shape of the alleged infringement. Graphics on that (or on the physical embodiment of the design) are irrelevant“. This is a point worth watching as design law develops, and is something to keep in mind when advising on design filing strategies.