PMS International Group Plc v Magmatic Limited

The scope of a Community Registered Design is determined principally by interpreting the images filed by the applicant. A monochrome representation is not confined to particular colours, but tonal contrasts within a CAD image may claim contrasting colours as features of the design.

Infringement requires a global comparison of the overall impressions produced on the informed user. The court must consider the design’s overall visual character and any decoration on the accused product that affects how its shape strikes the eye. An appellate court should interfere with that assessment only where the trial judge materially erred in approach. As a matter of principle, absence of ornamentation can be a feature of a registered design, although that proposition was obiter.

PMS International Group Plc v Magmatic Limited concerned a Community Registered Design for a child’s ride-on suitcase represented by six monochrome CAD images. Magmatic alleged that PMS’s brightly coloured and decorated Kiddee Cases produced the same overall impression on the informed user.

Arnold J held that the design was valid and infringed, while also determining claims concerning unregistered design right and copyright: [2013] EWHC 1925 (Pat). The Court of Appeal allowed PMS’s appeal and held that there was no infringement: [2014] EWCA Civ 181; [2014] RPC 24.

The issues before the Supreme Court were whether the trial judge had failed to consider the registered design’s horned-animal appearance, the effect of decoration on the accused products, and the contrasting tones shown in the registered images. The Court also considered whether any question required a reference to the Court of Justice of the European Union.

Lord Neuberger delivered the sole judgment, with which Lord Sumption, Lord Carnwath, Lord Hughes and Lord Hodge agreed.

1. Appeal dismissed unanimously. The Court of Appeal had correctly identified material errors in the trial judge’s approach and had been entitled to determine infringement for itself. Having applied the correct legal approach, its conclusion that the Kiddee Cases did not infringe should not be disturbed.
2. The nature and extent of the registered monopoly depended principally on the proper interpretation of the images filed. An applicant may choose the features and level of generality claimed. The images will almost always identify the monopoly because the product indication and specified optional information do not affect its scope under article 36(6) of Council Regulation (EC) No 6/2002.
3. The registered design conveyed the overall impression of a wheeled suitcase shaped like a horned animal. That was an essential feature which the trial judge had overlooked when undertaking the global comparison required by article 10(1). The Court of Appeal was also entitled to consider decoration on the Kiddee Cases because it affected how their shapes struck the eye and reinforced their different animal or insect appearances.
4. A monochrome filing is not limited to particular colours. Nevertheless, the grey and black tonal contrasts in these CAD images indicated that the strap, strips, wheels and spokes were claimed in a colour, or colours, contrasting with the remainder of the product. The registered design therefore claimed more than shape alone. A like-for-like comparison had to consider the colouring of the accused products.
5. An appellate court should be slow to interfere with a trial judge’s judgmental assessment of overall impression. Intervention is justified where the judge materially errs in principle or overlooks a significant matter despite giving detailed reasons. The trial judge’s failure to address the horned-animal impression and contrasting colours met that standard.
6. Obiter: absence of ornamentation can in principle be a feature of a registered design. Whether it is such a feature depends on interpreting the particular registered images. Ornamentation on an accused product then becomes a relevant factor rather than an automatic answer to infringement. Whether absence of ornamentation was itself a feature of this registration was left open.
7. No reference was made under article 267 of the Treaty for the Functioning of the European Union. Interpretation of these particular registered images raised no referable issue of EU law. The proposed general question about absence of ornamentation did not arise for decision and, in any event, admitted of no reasonable doubt.

1. United Kingdom Supreme Court: In PMS International Group Plc v Magmatic Limited [2016] UKSC 12, the court unanimously dismissed Magmatic’s appeal, upheld the Court of Appeal’s determination of non-infringement and declined to refer any question to the CJEU.
2. Court of Appeal: In [2014] EWCA Civ 181; [2014] RPC 24, the court allowed PMS’s appeal. It identified material errors in the trial judge’s comparison and concluded that the accused products produced a different overall impression.
3. High Court, Patents Court: In [2013] EWHC 1925 (Pat), Arnold J held that the registered design was not invalid and was infringed. He also found infringement of UK unregistered design rights but no infringement of copyright.