Magmatic Ltd v PMS International Ltd

For Community designs, the overall impression must be assessed by the informed user, having regard to the design corpus and the designer’s degree of freedom. A design which substantially departs from the design corpus and reflects considerable design freedom may receive broad protection. In comparing a registration directed to shape, surface graphics on the accused product are disregarded. Article 7(1) of the Regulation contains a narrow exception for obscure disclosures, and the party relying on that exception bears the burden of proof. For UK design right, an abstract generalisation covering many possible appearances may be a method or principle of construction rather than a protected design. Originality requires sufficient skill, effort and aesthetic judgment. Infringement is assessed objectively by comparing the alleged article with the design relied upon.

Magmatic manufactured the Trunki child’s ride-on suitcase. PMS imported and sold the Kiddee Case, whose design was inspired by the Trunki. Magmatic alleged infringement of a Community registered design, UK design rights in several aspects of the Trunki, and copyright in its packaging artwork and safety notice.

PMS argued that the Community registered design lacked individual character over the earlier Rodeo design if the Kiddee Case infringed it. The principal issues were the effect of the obscure-disclosure exception, the scope of protection and overall impression under the Community Designs Regulation, the subsistence and infringement of UK design right, and substantial reproduction of copyright artwork.

1. Community registered design. The obscure-disclosure exception in Article 7(1) of the Regulation is concerned with whether the design itself could reasonably have become known, not merely whether the disclosing event could have become known. The relevant sector is the sector from which the prior design came. The specialised circles are broadly construed, and the burden of proving the exception rests on the party relying on it, subject to a possible evidential shift where the disclosure appears obscure.
2. The informed user is a particularly observant user of the product who knows the design corpus, pays a relatively high degree of attention, and normally compares designs directly. The scope of protection is affected by the designer’s freedom and by the extent to which the registered design departs from the design corpus. The CRD represented a substantial departure and was created with considerable freedom, so it had broad protection.
3. In assessing overall impression, similarities and differences must be considered together. The CRD and Rodeo created different overall impressions. The Kiddee Case nevertheless created the same overall impression as the CRD. Because the CRD was registered for the shape of the suitcase, the graphical designs on the Kiddee Case were irrelevant to the comparison. PMS therefore infringed the CRD.
4. UK design right. Section 213(2) can encompass multiple aspects of configuration, including the relative arrangement of parts. But an abstract description covering a multitude of possible appearances is a method or principle of construction excluded by section 213(3)(a). The more specific descriptions of the internal straps, pocket and tow strap were capable of identifying protected designs. Originality requires sufficient skill, effort and aesthetic judgment in the new design. The Kiddee Case infringed designs A, B, D and F.
5. Copyright. Although the Kiddee Case packaging was stylistically similar and inspired by the Trunki artwork, the correspondences did not reproduce a substantial part of that artistic work. The copyright claim concerning the artwork therefore failed, while PMS had conceded infringement of the safety notice.