Magmatic v PMS International  UKSC 12
The Supreme Court was required to considered the scope of protection of the design afforded to Magmatic, manufacturers of “Trunki” the ride-on suitcase.
Magmatic argued infringement of their Community Registered Design by PMS International and their “Kiddee”, and their similar ride-on suitcase.
In the first instance, Magmatic were successful in their claim that “Kiddee” infringed the design rights of “Trunki”.
The main considerations of infringement were the extent to which surface decoration plays in protecting a design; also, whether the overall impression it creates is different in comparison. It was held that the CRD was only intended to protect the shape, thus any surface decoration could be ignored. It was held that the CRD was only intended to protect the shape and that any surface decoration could be ignored.
The decision was overturned in the Court of Appeal and consequently the Supreme Court had three factors to consider:
The horned animal appearance
The Supreme Court had found that the Trunki CRD had created an overall impression of a “horned animal”. They concluded that this was different to the overall impression of the Kiddee case, which despite also having protuberances, they more closely resembled antennae than horns.
The absence of decoration
In deciding whether the absence of ornamentation can be considered as a feature of a design, Lord Neuberger had stated:
“Minimalism can self-evidently be an important aspect of a just design just as intensive decoration can be. It would be extraordinary if absence of ornamentation could not be a feature of a design, and, unsurprisingly, no authority has been cited to support such a proposition”.
As can be seen, decoration or even lack of decoration itself can be considered as a feature of a design.
Of course, this carries significant implications as to the extent of protection that CRD’s hold. Accordingly, many who are reliant upon CRD protection may find themselves extremely concerned.
The two-tone colouring of the CRD
It was found in this matter that the CRD protected the shape of the Trunki in two contrasting colours and that where a design application shows the use of different colours, this will be taken to be a distinctive feature of the design.
The implication of the above judgement will be likely to cause significant concerns to UK businesses who seek to depend on their IP rights to commercialise their products. UK courts will most likely seek to restrict the level of protection afforded, allowing copycats an easy route without infringement.
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