After a three-year battle, the Supreme Court has dismissed UK company Magmatic's appeal against the Court of Appeal's finding that its registered Community design (RCD) was not infringed by Hong Kong rival PMS' Kiddee Case.
In 2003, designer Robert Law updated an original design for a ride-on suitcase for children and registered the design as a Community design right. The registered design consisted of six images prepared by a 3D Computer Assisted Design (CAD) program, in monochrome, with grey-scale shading and distinct tonal contrasts. By 2011, Trunki estimates that approximately 20% of all 3-6 year olds in the UK owned its product and by 2014 the product was sold in over 95 countries.
In 2013, Magmatic issued proceedings seeking damages and an injunction against PMS alleging that PMS was importing into, and selling in the UK and Germany, a product that infringed its RCD. In July 2013, the High Court (HC) found that the RCD had been infringed on the basis that the RCD and the Kiddee Case designs created the same overall impression. The Court of Appeal (CoA) overturned this decision in February 2014 and held that there was no infringement. In 2015, Magmatic appealed to the Supreme Court (SC) and on 9 March 2016 the SC handed down its judgment, unanimously upholding the CoA’s decision.
The SC agreed with the CoA’s three criticisms of the HC judgment, namely:
The SC agreed with the CoA’s criticisms of the HC’s approach and confirmed that the CoA was entitled to reconsider the question of infringement and reach its own decision. The SC confirmed that the CoA’s approach was correct so Magmatic’s appeal was dismissed and the CoA’s decision that there was no infringement was upheld.
Paul Beverley, the managing director of PMS, has openly admitted that he came up with the idea for his product Kiddee Case as a result of seeing a Trunki and discovering that a discount model was not available. Despite this, but with considerable sympathy for Magmatic, the SC agreed with the CoA that the design of the Kiddee Case was too far removed from the RCD to constitute an infringement. So what does this judgment mean for designers?
The cases emphasises the fact that design registrations only protect the specific aesthetic design of a product, not the concept. Designers can apply to register a patent if the concept of their product is new and inventive and this would prevent competitors copying the product, but arguably this is not always relevant or practical for small start-up designers.
Designers should consider how best to represent their designs when filing a registration particularly as the enforcement of design registrations that have no ornamentation, will require an assessment of whether the overall impression created by the accused product is affected by decoration. There are various options available to designers such as line drawings, CAD and photographs and each option should be considered to decide which is most appropriate in the circumstances, particularly because design registrations cannot be amended, removed or replaced after filing.