On Friday 28 February 2014, the Court of Appeal, led by Lord Justice Kitchin, allowed an appeal by PMS International Limited (PMS) of a High Court finding from Mr Justice Arnold.
The dispute was about ride-on children's suitcases - PMS's "Kiddee Case", which was openly admitted to be designed to be a cheaper version of Magmatic Limited's "Trunki" range. Images of the designs in question can be found below.
PMS argued it had not infringed Magmatic's community registered design (CRD), but did not appeal Arnold J's other finding, that it infringed certain UK unregistered design rights owned by Magmatic. Validity of the CRD was not challenged.
Summary of the decision
The Court of Appeal believed that Mr Justice Arnold had made some errors in his analysis of the community registered design and in the way he carried out the global assessment. On this basis, Lord Justice Kitchin stated that the court was free to form its own view of the merits of the case and reassess the findings of the lower court.
This appears to be at odds with its own decision a month earlier in the Greek yoghurt case, Fage v Chobani, (where Lord Justice Kitchin also gave the leading judgment). In this instance, the court ruled that "Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to the evaluation of those facts and to inferences to be drawn from them". Clearly in this case, he felt compelled to do so.
On the breadth of protection, the court ruled that the designer had a "substantial degree of design freedom", meaning that, subject to Magmatic's own prior design (called the Rodeo), the CRD enjoyed "a relatively broad scope of protection".
The court ruled that, at a general level, there were some similarities between the alleged infringement, the Kiddee case, and the CRD. However, there were "significant differences" between the Kiddee case and the CRD too, some of which the court found to be "particularly striking".
This led to the court's finding that "the overall impression created by the two designs is very different. The impression created by the CRD is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears."
Why should other people be interested in this decision?
This case is of interest for anyone registering design rights, particularly as Magmatic's design was a computer generated, rendered 3D image. Had it been a simple line drawing, the result may have been different.
For practitioners, the ways that the court decided that the trial judge fell into error are of interest, as it provides further guidance on how the comparison between the CRD and the alleged infringement should be carried out. There were, according to the Court of Appeal, two errors made by the trial judge.
- First, he failed to carry out a "global comparison" having regard for the fact that the CRD was "clearly intended to create the impression of a horned animal". The Court of Appeal took account of the various aspects of surface decoration on PMS' product to produce the overall impression of the product, and said that the judge was wrong to ignore surface decoration.
- Secondly, the judge failed to take account of the "colour contrast between the wheels and the body of the CRD". Although he was right to ignore colour itself (as the registration was monochrome), he should have taken account of the distinct colour contrasts seen in the monochrome registration images.
These two errors are interesting, and may well be the subject of appeal (if the Supreme Court will have it). The latter in particular does not appear to sit well with the Proctor & Gamble v Reckitt Benckiser Court of Appeal judgment about Febreze, despite the Court of Appeal's efforts in this case to distinguish it.
The result of this case will not be universally accepted: the PMS product was clearly designed to be as close as possible to the Trunki range. The differences (and resulting non-infringement finding) seems to arise largely from the fact that PMS chose to make different animals, and as such these had different overall impressions to the Magmatic registered design. The fact that PMS did not have to make animals at all, it could have made cars or anything else, was not taken into account.
This is likely to be controversial, especially where the Court of Appeal itself acknowledged that there was a broad design freedom in this case.
What are the learning points for designers?
There are a few practical pointers from this case that apply to anyone with an interest in protecting their designs:
- Registered designs are most effective when they are simply line drawings (Magmatic's design was rendered greyscale computer generated 3D images, which meant that the court took account of the colour contrasts, the effect of light on its surfaces, and so on);
- UK unregistered design rights seem to be much more successful in the courts than registered design cases - in this case PMS did not even appeal the finding of infringement. This trend (seen in this case, the Kohler Mira showers case and the Sealed Air strawberry punnets case to name just a few recent examples) is due to a number of reasons:
- unregistered designs can be identified after knowledge of the infringement and crafted accordingly;
- a defendant must prove a design was commonplace before it is limited/disallowed, rather than simply find a single piece of prior art; and
- unregistered UK design right only looks at the shape and configuration of the article made to the design - it positively excludes surface decoration, the materials the article is made from, and so on.
- The lesson from the success of unregistered rights is perhaps to file more than one version of a design when registering designs. There are significant economies of scale in official fees for filing several designs in the same field on the same day, allowing designers to file various parts of their product as separate designs in a relatively cost-effective way.
- Courts are construing registered designs reasonably narrowly, but they are still useful for their deterrent value, and the fees for filing them are very low indeed. In our experience, allegations of infringement of registered rights settle much more quickly than unregistered rights.
The designs in question
The following pictures are taken from the annex to the judgment. The left hand image on each row is the representation in the community registered design. The other two images on the same row are the equivalent representation of the products alleged to infringe. As colour is to be disregarded, they are in monochrome.