Trunki sent packing by Supreme Court

10 Mar 2016 | 9 min read
If a design registration shows no surface decoration should surface decoration be taken into account when considering infringement of that registered design? In PMS International Group Plc (Respondent) v Magmatic Limited (Appellant) [2016] UKSC 12, the Supreme Court gives its answer on this and other issues saying ‘yes, but on the facts—only a little’. The Supreme Court also declined to refer a question on surface decoration to the Court of Justice.

What is the background to this appeal?

Community Design Right is governed by Council Regulation (EC) No 6/2002. Article 4(1) of the Regulation explains that a design 'shall be protected…to the extent that it is new and has individual character'. Recital (14) of the Regulation mentions that a design has 'individual character' if 'the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied….'. In this case the crucial issue was whether the Kiddee Case produced on the informed user a different overall impression from the CRD.In the High Court hearing, June 2013, the judge ruled in Magmatic's favour, finding that its CRD for the Trunki had been infringed by the Kiddee Case. See news analysis: Design infringement: Trunki case closed

The Court of Appeal reversed the High Court decision finding that there were enough differences between the CRD and the Kiddee Case to create a different overall impression. In reaching its decision, the Court of Appeal decided that the High Court made two errors in its application of the law to the facts:

  1. an essential element of the Trunki design was that it conveyed a horned animal. However, when taking into account the surface decoration of the Kiddee Case (tiger stripes and lady bird spots), it was clear that it did not convey a horned animal. In declining to consider surface decoration, the High Court failed to carry out a global comparison
  2. the High Court had also overlooked the issue of colour contrast. The CRD representations show a contrast in colour between the wheels and strap (shaded) and the rest of the case (light) which the Court of Appeal held to be striking features in the CRD. These features were not replicated in the Kiddee Case which used the same overall colour. The High Court failed to take this into account when carrying out its assessment

See news analysis: Trunki—an open and shut case of design infringement?

What did the Supreme Court conclude?

The Supreme court dismissed Magmatic's appeal. In so doing it had to consider whether the Court of Appeal's conclusion based on its criticisms of the first instance judge’s approach were justified. It described the three criticisms as follows:

The CRD as an animal with horns

The first criticism was that the judge failed to give proper weight to the overall impression of the CRD as an animal with horns, which was significantly different from the impression made by the Kiddee Case, which were either an insect with antennae or an animal with ears. Because the judge had conscientiously identified a significant number of points which influenced his decision, the Supreme Court decided that the judge had overlooked this important point. It therefore agreed with this first criticism.

Surface decoration

The second criticism was that the judge had failed to take into account the effect of the lack surface decoration on the CRD. The effect of the lack of surface decoration was that it supported the impression of the suitcase looking like a horned animal. The Supreme Court agreed with this criticism but considered this to be a relatively minor point in that, unless the decoration had been positively distracting in nature, such as flashing lights, it would have been unlikely to have much effect in diluting the horned animal impression made by the CRD. It did, however, accept that the point had some force, in the sense that, unless it included items such as eyes and a mouth, any decoration could well detract from the animal impression, and, even if it consisted of such items, it could be said to distract the observer’s attention from the horns.

Colour contrast

On the question of colour, the Supreme Court confirmed that where a design is shown in colours, the colours are claimed, while a black and white drawing or photo covers all colours. It agreed with the Court of Appeal's observation that 'the various representations [in the CRD] are shown in monochrome, and so it must be concluded that this design is not limited to particular colours', and therefore 'PMS cannot point to the colour of the Kiddee Case as being a point of distinction' (paragraphs [33–-[34]).

The third criticism was that the judge ignored the colour contrast in the CRD between the body of the suitcase (grey in colour) and the black wheels, spokes, strap and strip (in the Court of Appeal hearing Kitchin LJ pointed out that other features such as the clasps or the horns are not shown in a contrasting colour). The Supreme Court also agreed with this criticism, holding that the judge was wrong in holding that the CRD was simply a claim for shape because the CRD comprised not just a shape, but a shape in two contrasting colours.

Will Trunki be packing its cases for a reference to the Court of Justice?

No.

During the appeal, Magmatic put forward an argument that the criticism relating to surface decoration raised the question of whether the absence of surface decoration can be considered a feature of design and if so whether it was a feature of the CRD in this case (see para [42]). Magmatic (supported by The Comptroller General of Patents, Designs and Trade Marks, in his capacity of Registrar of Designs), requested that this question be referred to the Court of Justice.

The request was denied because:

  1. the request did not arise on the appeal
  2. it wasn't arguable that a lack of surface decoration could not be a feature of a CRD, ie the Supreme Court considered that it would be extraordinary if absence of ornamentation could not be a feature of a design

The Supreme Court stated (obiter) that:

'absence of decoration can, as a matter of principle, be a feature of a registered design. Simplicity or minimalism can notoriously be an aspect of a design, and it would be very curious if a design right registration system did not cater for it'

What can lawyers and their clients take away from this judgment?

Designs cases are usually very fact specific and this makes it difficult to extract guidance from them. However, this case has provided useful guidance on the scope of registered designs protection. Those considering registering a design should think carefully about the way in which they represent their designs in the design registration(s). The scope of a registered design is determined from representations in the registration—the Trunki case has confirmed our previous recommendation that it may be important to take expert advice when considering design protection. A simple (line drawing) design representation offering broad protection may risk being invalidated by prior art, while a design that is too specific may not stand up against similar designs. On the facts of this case a more sophisticated line drawing may have afforded Magmatic wider protection.

In its judgment at paras [31]–[32] the Supreme Court points to guidance on submitting images in respect of design applications:

'31. [..] .an applicant should appreciate that it will almost always be those images which exclusively identify the nature and extent of the monopoly which he is claiming. As Dr Martin Schlötelburg, the co-ordinator of OHIM’s Designs Department, has written, “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 Community Design: First Experience with Registrations [2003] EIPR 383, 385. And, as Dr Schlötelburg went on to explain, an applicant is free to indicate which, if any, aspects of the images of a Community Registered Design are disclaimed:

“Where an applicant wishes to exclude features which are shown in the representation for explanatory purposes only, but do not form part of the claimed design, he may disclaim those auxiliary features by depicting them in broken lines (for drawings) or by means of colouring them (for black and white drawings or photos) or encircling them (for any drawing or photo).”

32. This is entirely consistent with what is stated in paragraph 4.3 of OHIM’s Manual Concerning Proceedings Before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Registered Community Designs, Examination of Applications (2nd ed, in force at the relevant time for present purposes). Over and above these considerations, it is also worth remembering that an applicant is entitled to make any number of applications. More broadly, it is for an applicant to make clear what is included and what is excluded in a registered design, and he has wide freedom as to the means he uses. It is not the task of the court to advise the applicant how it is to be done. That it may be said is a matter of practice rather than law, and if further guidance is needed it can be sought from other sources, such as OHIM.'

The Trunki designs consisted of computer generated, monochrome representations of the clamshell suitcase as opposed to black and white line drawings. Businesses who have registered designs using monochrome drawings without surface decoration should consider reviewing their design registrations to see if they will need to make new registrations (so long as any applications for registration would not be anticipated by the earlier registrations) for their designs using black and white line-drawings to increase the scope of their design protection. The Supreme Court pointed out that Council Regulation (EC) No 6/2002 provides that applications for registration should be cheap and simple to make. On that basis businesses should consider registering a number of registrations including both simple line drawings and computer generated representations when considering the protection of new product designs.

Joshy Thomas, solicitor in the Lexis®PSL IP & IT team.

This article is republished with kind permission of WIPIT’s sister site, Lexis®PSL IP & IT. For a free trial click here.

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