CASE 3

PMS International Group Plc vs Magmatic Ltd [2016]

UKSC 12 (9 March 2016)

Class: GD1401
Subject: IPR121 - Nguyễn Quốc Thụy Phương
Group members: Mai Thị Thanh Huyền - Bùi Anh Minh - Nguyễn Thảo Uyên
- Nguyễn Hưng - Tô Nguyễn Lan Hương - Trần Kỳ Duyên

Table of Contents

I. SUMMERIZE THE CASE.....................................................................................................................2

1. Introduction..........................................................................................................................................2
2. Summerize the case..............................................................................................................................2
II. CITATION OF THE LAW................................................................................................................2
III. THE PROCEEDING..........................................................................................................................4
1. First instance decision..........................................................................................................................4
2. The Court of Appeal.............................................................................................................................5
3. The Supreme Court...............................................................................................................................6
4. Final Conclusion...................................................................................................................................6
IV. CONCLUSION & PERSONAL OPINION......................................................................................6

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I. SUMMERIZE THE CASE

1. Introduction

Bristol Company Magmatic, founded by Rob Law in 2003, is the company behind the Trunki ride-on
suitcase and the owner of a CRD for a clamshell ride-on suitcase designed to look like an abstract of an
animal with horns. [ CITATION The16 \l 1033 ]

PMS International is the company behind Kiddee Case, which is sold in two basic versions – an animal
version with handles formed to look like ears, and an insect version with handles formed to look like
antennae. These are decorated to create a variety of models including a tiger and a ladybird. [ CITATION
The16 \l 1033 ]

2. Summerize the case

Magmatic are the owner and designer of the “Trunki” case, which is a popular ride-on suit case for kids. To
ensure the Trunki case was suitably protected from an IP perspective, Magmatic had obtained a community
registered design (CRD) for it.  The CRD consisted of six 3D Computer Assisted Design (CAD) drawings of
the case, in monochrome, with grey scale shading and distinct tonal contrasts. [ CITATION Phi16 \l 1033 ]

The Trunki case was in itself a fresh idea and the product became an instant success when launched. As with
all successful products it was not long before competitors sought to get in on the action and launch their own
similar ride-on suit cases for kids.  In particular, PMS launched its own version of the ride-on suit case, the
“Kiddee Case”. [ CITATION Phi16 \l 1033 ]

Magmatic were not particularly impressed with PMS’s actions and so in February 2013, Magmatic issued
proceedings seeking damages and an injunction against PMS alleging that PMS was importing into, and
selling in, the United Kingdom and Germany a “Kiddee Case” which infringed the CRD. [ CITATION Phi16 \l
1033 ].

II. CITATION OF THE LAW

1. COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs (OJ

EC No L 3 of 5.1.2002, p. 1)
According to The Council Of The European Union, Having regard to the Treaty establishing the
European Community, and in particular Article 308:
(14) The assessment as to whether a design has individual character should be based on whether
the overall impression produced on an informed user viewing the design clearly differs from that
produced on him by the existing design corpus, taking into consideration the nature of the
product to which the design is applied or in which it is incorporated, and in particular the
industrial sector to which it belongs and the degree of freedom of the designer in developing the
design.

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 (24) It is a fundamental objective of this Regulation that the procedure for obtaining a registered
Community design should present the minimum cost and difficulty to applicants, so as to make
it readily available to small and medium-sized enterprises as well as to individual designers.

Title II The Law Relating To Designs

Section 1
Requirements for protection
- The word "design & product" is defined in Article 3,
(a) "design" means the appearance of the whole or a part of a product resulting from the features
of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself
and/or its ornamentation;
(b) "product" means any industrial or handicraft item, including inter alia parts intended to be
assembled into a complex product, packaging, get-up, graphic symbols and typographic
typefaces, but excluding computer programs;
- Article 4 Requirements for protection
(1). A design shall be protected by a Community design to the extent that it is new and has
individual character.
- Article 6 (Individual character) explains that a design has individual character “if the overall
impression it produces on the informed user differs from the overall impression produced on such a
user by any design which has been made available to the public.”
- Article 10 Scope of protection
(1). The scope of the protection conferred by a Community design shall include any design
which does not produce on the informed user a different overall impression.
(2). In assessing the scope of protection, the degree of freedom of the designer in developing his
design shall be taken into consideration.
Section 1
Filing of applications and the conditions which govern them
- Article 36 Conditions with which applications must comply
(1) the Principal Regulation sets out the requirements of a valid application for registration of a
design, which include
(c) a representation of the design suitable for reproduction. However, if the object of the
application is a two-dimensional design and the application contains a request for deferment of
publication in accordance with Article 50, the representation of the design may be replaced by a
specimen.

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 (2) Requirement an application shall further "contain an indication of the products in which the
design is intended to be incorporated or to which it is intended to be applied".
(3) An application “may contain” various things, including
(d) the classification of the products in which the design is intended to be incorporated or to which it is
intended to be applied according to class;

 COMMISSION REGULATION (EC) No 2245/2002 of 21 October 2002 implementing Council

Regulation (EC) No 6/2002 on Community designs (OJ EC No L 341 of 17.12.2002, p. 28)
Chapter I Application Procedure
Article 4 Representation of the design
(1) The representation of the design shall consist in a graphic or photographic reproduction of the
design, either in black and white or in colour. It shall meet the following requirements:
(c) ...;no explanatory text, wording or symbols, other than the indication "top" or the name or address
of the applicant, may be displayed thereon;
(e) the design shall be reproduced on a neutral background and shall not be retouched with ink or
correcting fluid. It shall be of a quality permitting all the details of the matter for which protection is
sought to be clearly distinguished and permitting it to be reduced or enlarged to a size... for entry in the
Register of Community Designs provided for in Article 72 of Regulation (EC) No 6/2002, hereinafter
"the Register", and for direct publishing in the Community Designs Bulletin referred to in Article 73 of
that Regulation.

Source:

[ CITATION COU \l 1033 ]

https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/cdr_legal_basis/62002_cv_e
n.pdf

[ CITATION COM \l 1033 ]

https://euipo.europa.eu/tunnel-
web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/cdr_legal_basis/22452002_c
v_en.pdf

III. THE PROCEEDING

1. First instance decision

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The High Court originally decided that the Kiddee Case “produced the same overall impression” as the
CRD, and then gave a reserved judgment, in which the court found that the Kiddee Case infringed the CRD
and UK unregistered design rights, but not copyright.
In his judgment, Arnold J addressed the question whether, when comparing the Kiddee Case with the CRD,
“the graphical designs on the surface of the Kiddee Case are to be ignored” and concluded that they were,
because, the “CRD is evidently for the shape of the suitcase, and the proper comparison is with the shape of
the Kiddee Case”.
He then identified and discussed the detailed similarities and differences between the CRD and the Kiddee
Case. In particular, he identified 11 items of similarity including “two horns/protrusions located at the top of
the front of the case”, and six features of the Kiddee Case which were absent from the CRD, although he said
that two of the six, namely “prominent animal markings” and “eyes at front” were to be ignored, as the
registration in this case “was for a shape”.
He also and identified the differences between two products as the Kiddee Case being “(i) the more rounded
contours of the Kiddee Case around the seating area …, (ii) the covered wheels of the Kiddee Case, … (iii)
the more flared areas … around the clasps and (iv) the absence of [a] lip [at the bottom of front and rear”.
Despite the variations, the overall impression created by the Kiddee Case and the CRD is similar. [ CITATION
JUD16 \l 1066 ].

2. The Court of Appeal

In his leading judgment in the Court of Appeal, Kitchin LJ found that Arnold J erred in three respects and
reported the reasons.
a. The Court of Appeal’s first criticism: the horned animal appearance
Arnold J is claimed to have failed to give adequate weight to the CRD's overall impression of an animal with
horns, which differed significantly from the Kiddee Case's image of a bug with antennae or an animal with
ears.
Arnold J did not mention in that paragraph the fact that the CRD images present as a horned animal. He
wrongly seems to have treated the antennae and ears of the Kiddee Case as “horn-like”.
b. The Court of Appeal’s second criticism: decoration of the Kiddee Case
When it came to the decoration on the Kiddee Case, Kitchin LJ disagreed with Arnold J. He chastised the
High Court Judge for not considering the decoration on the accused design and emphasized the importance
of considering the visual impression the producer wishes to convey to their customers, as this impression
will determine how the shape itself strikes the eye and the overall impression it conveys.
The Kiddee Case has features such as "the stripes on its flanks and the whiskers on either side of its nose
immediately convey to the informed user that this is a tiger with ears." It is undeniably not a horned animal.
c. The Court of Appeal’s third criticism: the two-tone colouring of the CRD
The third criticism is that the judge ignored the color contrast between the body and the wheels in the CRD.
The CRD images were in two colors: grey for the majority of the body (including the horns), and black for

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the wheels and spokes, strap, and strip, whereas on the Kiddee Case the wheels were mostly covered, and the
handles were the same color as the body.
He described this contrast as “a fairly striking feature of the CRD” which was “simply not present in the
accused designs”.
d. Conclusion
In conclusion, Kitchin LJ stated that “the overall impression created by the two designs is very different,”
and thus decided that the Kiddee Case did not infringe the CRD. [ CITATION JUD16 \l 1066 ]

3. The Supreme Court

Magmatic's appeal is dismissed unanimously by the Supreme Court. Lord Neuberger delivers the only
decision on which the other Justices agree. The decisions were issued following a thorough examination of
the Court of Appeal's criticisms.
In response to the first criticism, the appellate court can conclude that when the trial judge has given a full
and careful judgment, conscientiously identifying a significant number of points that weigh with him, his
failure to mention an important point means that he has overlooked it.
In response to the second criticism, the Supreme Court clarified that the Court of Appeal's criticism was
correct, though it is only a minor point that only mildly reinforces the first criticism.
In response to the third criticism, the Court of Appeal was correct: the CRD claimed not just a shape, but a
shape in two contrasting colors, and the judge was incorrect in holding that the CRD was simply a claim for
shape. [ CITATION PRE16 \l 1066 ]

4. Final Conclusion
Because the Court of Appeal reconsidered the issue of infringement on the proper legal basis, the Supreme
Court had no reason to question their conclusion.

As a result, the decision that the Kiddee suitcase did not infringe on the design registration is now final.
[ CITATION PRE16 \l 1066 ]

Source:

[CITATION JUD16 \l 1066 ]

[ CITATION PRE16 \l 1066 ]

IV. CONCLUSION & PERSONAL OPINION

Design rights do not protect ideas (such as the idea for a ride-on children’s suitcase) perse, only how they are

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expressed. In particular, it is a reminder that design registrations protect the design as it is represented in
the application/registration, and that this is not necessarily the same as the appearance of the finished
product on the market.

 A crucial consideration in the Trunki proceedings was determining what the design registration
actually protected, as it was only then possible to determine whether or not the Kiddee suitcase actually
infringed it.

Lessons from Trunki:

The category of goods for which a design is registered, and any other written description filed with an
application, will not generally be considered by a court when they are deciding what a design registration
actually protects. Instead, they focus on the images. Therefore, it is apparent that applicants must consider
very carefully which images to file so as to best protect the aspects of their design which are important to
them.

So what guidance is there for applicants as to how to ensure particular aspects of their design are protected
by the images they file? Well, rather unhelpfully, at paragraph 32 of the judgment, the Supreme Court stated
that:

“It is for the applicant to make clear what is included and what is excluded in a registered design, and he
has a wide freedom as to the means he chooses. It is not the task of the court to determine how it is done.”

 Applicants should think very carefully about what they wish to protect when deciding which images
of their design to file.

 As the Trunki case demonstrates, it is highly advisable to seek advice before filing design
applications to try to maximise the chances that the images filed are going to be considered to protect the
elements you intend them to.

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