Magmatic Ltd v PMS International Group Plc

The scope of a Community registered design is determined by its graphical representation. A monochrome filing does not confine the design to white or exclude all colour from the comparison. However, a global comparison must take account of every depicted visual feature and of decoration on the accused product where it materially alters the visual impression created by its shape.

The informed user compares the designs globally, while giving appropriate weight to the design corpus, the designer’s freedom and the prominence of visible features. A product which shares general luggage and animal-like features will not infringe if it creates a different overall impression.

Magmatic owned a Community registered design for a children’s ride-on suitcase marketed as the Trunki. PMS imported and sold the Kiddee Case, including ladybird and tiger versions decorated with animal imagery.

At trial, Arnold J held that the Kiddee Case infringed the registered design, having excluded its surface decoration from the comparison. His judgment is reported at [2013] EWHC 1925 (Pat).

PMS appealed the finding of infringement. The central issue was whether the registration protected only the suitcase’s shape, so that the Kiddee Case’s decoration was irrelevant, and whether the two designs produced the same overall impression on the informed user.

1. Appeal allowed unanimously. Kitchin LJ, with whom Black and Moses LJJ agreed, concluded that the Kiddee Case did not infringe the Community registered design.

2. The scope of the design had to be discerned from its graphical representation. Under Article 36(6), the product indication and any description did not affect that scope. The registration comprised three-dimensional monochrome images, not merely simple line drawings. It conveyed the visual message of a sleek, stylised horned animal, assisted by the absence of imagery which would counteract that impression. The monochrome images did not restrict the design to particular colours, but they did depict a striking contrast between the wheels and strap and the suitcase body.

3. The judge had wrongly treated the registration as one for shape alone and excluded all decoration on the accused products. The general approach in Procter & Gamble remained correct in its context, but the significance of decoration depended on the design in issue. Here, the ladybird markings and antennae, and the tiger stripes, whiskers and ears, materially affected how the Kiddee Case shapes struck the eye. They therefore had to be considered in the global comparison. This was consistent with Samsung, where ornamentation could matter when the registered design’s lack of ornamentation was a feature.

4. The informed user was particularly observant, knew the design corpus and could make a direct comparison. The comparison was global, with greater weight given to features outside the corpus and features for which the designer had substantial freedom. Although the products shared some general features, the Kiddee Case had a softer, rounded and asymmetric profile, covered wheels, different handles, straps and clasps, no cut-away side feature, no rear tab and no projecting lip. It suggested an insect or an animal with floppy ears, rather than the horned animal conveyed by the registration. The designs produced different overall impressions.

• Court of Appeal (Civil Division): Allowed PMS’s appeal and held that the Kiddee Case did not infringe the Community registered design: [2014] EWCA Civ 181.
• High Court, Chancery Division, Patents Court: Arnold J held that the Kiddee Case infringed the Community registered design: [2013] EWHC 1925 (Pat).