Dr David Eyre

April 2016

The Supreme Court has now published its Judgement in the case of PMS International Group versus Magmatic Limited ([2016] UKSC 12), better known as the “Trunki” case after the well-known children’s ride-on suitcase manufactured by the appellant.

The Supreme Court upheld the Court of Appeal’s decision that PMS’s “Kiddee case” product did not infringe the Community Registered Design (CRD) owned by Magmatic. This is in spite of the observation by Lord Neuberger that:

[…] the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever […] Furthermore, it appears clear that Mr Beverly of PMS conceived the idea of manufacturing a Kiddie Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention but with the design (our emphasis).

Judgement, paragraph 57

In short, this case hinged not on the imagination shown by the design but on the scope of protection of the CRD that is defined by the choice, number and type of representations of the design set out in the drawings of the registration. Thus, this case is an object lesson that the drawings of a CRD must be carefully considered in terms of the information that they present and in terms of the information that they omit in order to correctly gauge the scope of protection of a CRD.

In relation to the drawings of a CRD Lord Neuberger noted particularly that:

[…] it is right to bear in mind that an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses. Further, […] An applicant should appreciate that it will almost always be those images which exclusively identify the nature and extent of the monopoly which he is claiming […] “The selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features meanings claiming them” Over and above these considerations it is also worth remembering that an applicant is entitled to make any number of applications. More broadly it is for an applicant to make clear what is included and what is excluded in a registered design, and he has wide freedom as to the means he uses. It is not the task of the court to advise the applicant how it is to be done (our emphasis).

Judgement, paragraphs 31 and 32

Thus this Judgement is particularly relevant to owners and registrants of Community Registered Designs because it sets out how the drawings of a community registered design are to be interpreted in terms of the scope of protection that they define. This case also warns that the onus is on the applicant, and not the court, to correctly define the scope of protection that they desire by way of preparing and filing suitable drawings .

Accordingly, we would recommend the following to an applicant for a CRD who is preparing drawings:

• If the CRD is for the shape of a product then we recommend that drawings of the product be prepared as black-and-white line drawings. As stated in paragraph 34 of the Judgement, “where a design is shown in colours, the colours are claimed, while a black-and-white drawing or photo covers all colours”. Thus use of a black-and-white line drawing means that there is no ambiguity that the CRD is for the shape of the product and that the CRD is neutral as to the colouration or other ornamentation that might be added to the protected design.
• Multiple drawings should be filed to show, potentially, the registered design without any colouration as well as representations of each of the colourways and/or ornamented designs derived from the basic design.
• Care should be taken in the preparation of line drawings not to include small details that might be interpreted as an explicit disclosure that the design intentionally lacks other ornamentation. This follows Lord Neuberger’s comment obit that “it seems plain to me that absence of decoration can, as a matter of principle, be a feature of a registered design” and his reference to the largely un-ornamented design considered in Samsung Electronics (UK) Ltd versus Apple Inc. ([2013] ECDR 1 and [2013] FSR 9).
• Following the present judgement it appears clear that “subtle shadings and contours as well as decoration” can be considered features that might limit the scope of protection of the CRD if an unambiguously ‘broader’ design is not defined by other drawings of the CRD. Therefore care should be taken when filing CAD or photographs as representations of the designs because of the extent of additional information that can be interpreted as additional features limiting the scope of protection. As noted by Lord Neuberger in paragraph 46 of the Judgement:
  “[Line drawings] can show colouring and decoration, [but] they are generally less appropriate for that purpose than photographs or CAD images, which can easily show subtle shadings and contours, as well as decoration, such as colours and ornamentation.”
  Judgement, paragraph 46

In the present case the CRD included CAD drawings that showed the shape of the Trunki suitcase with the body in grey and the wheels, spokes and strap in black. This was interpreted as limiting the scope of protection of the RCD to designs comprising two contrasting colours, one colour for the body and another colour (or possibly other colours) for specified components (Judgement, paragraph 53). We strongly suspect that this was not the intention of Magmatic when they registered the design for Trunki. However, this is the scope of protection that they defined and that has been found not to be infringed by PMS. To conclude, each of the features of the drawings of an RCD potentially limit the scope of protection and thus must be carefully considered before filing in the context of the individual drawing and in the context of the design as defined by all of the drawings.