18/04/2014
On 28th February 2014, the Court of Appeal overturned an earlier High Court decision and ruled that suitcases sold by PMS International Ltd under the name Kiddee Case did not infringe a Community Registered Design (CRD) belonging to Magmatic Ltd. (Click here to view the decision.)
The Magmatic CRD (No. 43427-0001) relates to a children’s ride-on suitcase marketed under the trademark Trunki. The CRD consists of six representations of such a suitcase showing the exterior of the case from a number of different perspectives. The representations consist of monochrome views of a 3D computer-generated model of the case, rather than simple line drawings.
In the earlier High Court decision in June 2013, Arnold J ruled that the CRD was distinguished over an earlier version of the Trunki, known as the Rodeo, by virtue of the shape of the suitcase and the position of the handles and clasp which give the Trunki an appearance of a horned animal.
When comparing the Kiddee Cases with the representations in the CRD, Arnold J decided that since the CRD does not show any graphical designs on the surface of the suitcase, the surface decoration of the Kiddee Cases should be ignored. On this basis, and despite expressing doubts as to whether his decision was correct, Arnold J ruled that although differences exist in the shape of the Kiddee Case and the CRD, the overall impression that both suitcases convey is the same.
However, when reconsidering the facts in the Court of Appeal case, the judges found Arnold J’s reasoning to be flawed. Firstly, the Court of Appeal found that despite recognising that the CRD suitcase had the appearance of a horned animal when comparing the CRD to the earlier Rodeo suitcase, Arnold J failed to take the same into account when comparing the CRD to the Kiddee Cases. In particular, the Court of Appeal decided that since the CRD suitcase conveys an overall impression of a horned animal, the overall impression of the Kiddee Cases, including the surface decoration, should be taken into account. Specifically, despite the fact that the CRD was not limited to a particular surface decoration, the Court of Appeal decided that the surface decoration of the Kiddee Cases had such a significant impact of the overall impression that such surface decoration could not be ignored. On this basis, the Court of Appeal ruled that the ladybird and tiger decorations on the Kiddee Cases conveyed the impressions of a ladybird with antennae and a tiger with ears, rather than a horned animal, as required by the CRD.
Secondly, the Court of Appeal decided that although the CRD representations were monochrome and therefore not restricted to any particular colours, the fact that each of the representations depicted the wheels and the strap in black and in contrast to the rest of the suitcase was significant. In particular, the Court of Appeal decided that the scope of the CRD was limited to suitcases having wheels and a strap with a contrasting colour when compared to the rest of the suitcase. The Court of Appeal based this decision on the fact that other elements of the suitcase, such as the clasps, were easily depicted as separate elements without the need for contrasting colour, and therefore the wheels and strap could have been equally depicted without contrasting colour. The Court of Appeal therefore took the view that the contrasting wheels and strap were an important part of the CRD and a feature not present in either of the Kiddee Cases.
Accordingly, the Court of Appeal found that the Kiddee Cases did not infringe the Magmatic CRD and in the process provided two important take-home messages as far as CRDs are concerned:
- even if a CRD for an article is not limited to a particular surface decoration, the surface decoration of an alleged infringing article may still be taken into account if it significantly impacts the overall impression conveyed to an informed user; and
- if contrasting colours are not an essential requirement of a design, do not use contrasting colours in the CRD, even if the representations are monochrome!
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
