Last month the Supreme Court (the most senior court in the UK) issued its long awaited judgment in PMS International Group PLC v Magmatic Limited [2016] UKSC 12, more commonly referred to as the Trunki case. The decision, and the reasoning behind it, has been subject to significant debate in recent days. However, it seems sensible now to focus on what practical lessons can be learned from it by designers and their legal advisors.
Perhaps most pertinently, the decision highlights that the crucial factor in determining the scope of registered design rights is the images filed with the application, which may not be interpreted as the applicant may expect. Therefore, it is important to consider in some detail what aspects of your design you wish to protect (e.g. its shape, its colours, its surface decoration), and consult with professional advisors to ensure that the images filed will maximise protection for those features.
First, I will set out in outline the background to the Trunki decision, and what the decision says about the interpretation of design images, before going on to discuss what practical lessons applicants for registered designs can learn from it.
Background to the Decision
Magmatic is the business behind the Trunki range of ride-on suitcases for children. As part of their effort to protect the design of their suitcases, Magmatic obtained European Community Registered Design No. 43427-0001, which represented their design using the following images:
In 2013, Magmatic sued PMS in the High Court for, amongst other things, allegedly infringing this design registration by importing into the UK and selling a ride-on suitcase for children called the Kiddee Case, two examples of which can be seen below:
The High Court found that the registered design was infringed. PMS then appealled to the Court of Appeal, which found that the judge in the High Court had made material errors, sufficient to allow them to overturn his judgment and decide the infringement claim themselves, concluding that in fact the registration was not infringed. Magmatic appealed that decision to the Supreme Court, who last month held that:
1) The Court of Appeal was entitled to overturn the High Court’s decision, as it was based on flawed reasoning, and
2) The Court of Appeal reconsidered the issue of infringement on the correct legal basis, and so the Supreme Court had no reason to question their conclusion.
As a result, the decision that the design registration was not infringed by the Kiddee suitcase is now final.
The Reasoning
Registered Community Designs protect the appearance of the whole or a part of a product, which may include its lines, contours, colours, shape, texture, the material from which it is made, and/or its ornamentation (such as the way it is decorated). They can also protect graphic symbols, such as logos or character drawings.
When a product does not produce a different overall impression on the informed user of the product in issue from that created by the design in a registration, it may infringe that registration. In the Trunki proceedings the informed user was judged to be the parent, carer or relative of a child between the ages of three and six. If such people would think the Kiddee suitcase created the same overall impression as the images in Magmatic’s registration, infringement could be found.
As indicated above, the Court of Appeal thought the judge in the High Court made sufficient errors when considering the matter to justify their overturning his decision and redeciding the infringement issue themselves. Magmatic then argued that there were three reasons given by the Court of Appeal for overturning the original trial judge’s finding of infringement which should be overturned by the Supreme Court. The Supreme Court saw no reason to interfere with the Court of Appeal’s conclusions on these three points.
The first reason given by the Court of Appeal for overturning the original decision was that, whilst the trial judge identified a significant number of similarities and differences between the registered design and the Kiddee suitcase, when considering overall impression, he made an error in failing to consider that the overall impression given by the images in the registered design is that of a horned animal. The Kiddee suitcase on the other hand, said the Court of Appeal, is more insect-like.
Magmatic argued that the second reason the Court of Appeal overturned the High Court’s decision was a finding that the absence of decoration on the suitcase shown in the images in the registered design should be considered to be a feature of the design, and so, when compared with the highly-decorated Kiddee suitcase, the overall impression may be materially altered. The Supreme Court took the view that this was not a freestanding reason for the Court of Appeal’s decision at all, but that it simply reinforced their finding that the overall impression created by the suitcase in the registration was of a horned animal. The Supreme Court did go on to discuss whether or not an absence of decoration could be considered a feature of a design, and expressed the view that it could. However, strictly speaking, this part of the judgment is what is referred to as obiter (in that whilst it represents the court’s opinion, they considered it not essential to deciding the case itself and so it is not legally binding on lower courts in future).
Finally, the Supreme Court saw no reason to interfere with the Court of Appeal’s finding that the colour contrasts in the images in the registration (e.g. the wheels, handle etc were black and the main body of the suitcase was not) were to be considered an aspect of the registered design, which the trial judge had been wrong to consider protected just the shape of the case.
Lessons from Trunki
This decision is a clear reminder from the courts that design rights do not protect ideas (such as the idea for a ride-on children’s suitcase) per se, only how they are 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. Therefore, 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.
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.
For example, it may have come as something of a shock to Magmatic to learn that their registration was not (as the trial judge thought, and they argued during the case) protecting the shape of their suitcase alone. It seems CAD drawings, or indeed photographs, showing a colour juxtaposition will be interpreted (at least by the English courts) as protecting a design with that juxtaposition. Indeed, it seems likely that it would not have been enough for them to file the CAD drawings or photographs with the wheels, strap etc in the same colour as the main body, as the court could have construed the lack of colour juxtaposition a factor in determining the overall impression created by the suitcase.
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.”
As it is the images filed alone which must clearly describe the design for which protection is sought, this is far from an easy task. The Court went on to suggest that guidance on the point could be sought from OHIM (soon to be the EU Intellectual Property Office) who register European Community Designs. However, it should be noted that OHIM’s opinion as to what is and is not included within the scope of an image will not necessarily be the same as the view taken by a national court deciding an infringement claim based on the resulting registration.
Nonetheless, to decide the Trunki case the Court had to consider the images in the registration in detail, and in doing so expressed views a) on those specific images, and b) how other types of images not involved in this case could be interpreted. Much of their discussion in this area is, strictly speaking, obiter (and hence not binding on courts in future), though nonetheless it provides a persuasive indication as to what courts (at least in the UK) may consider when determining the scope of design registrations in future.
Practical advice for applicants for design registrations in future
In Trunki, the Supreme Court agreed that the Computer Aided Design (CAD) drawings in the registration protected more than just the shape of the product. Had Magmatic just wanted to protect the shape of the product, it is suggested, they should instead just have filed line drawings of the product. The CAD drawings show more than just the shape. In particular, they show a) the appearance of the surface of the suitcase and its lack of decoration, and b) the juxtaposition between the colours of the wheels and handles, and the body of the suitcase. This, notwithstanding the fact that it was accepted that the fact that the CAD drawings had been filed in black and white, meant that the registration did not limit the design to covering specific colours of the product. For future filings, it is suggested that if drawings are intended to protect a design which is black and white, they should have been filed against a plain coloured background.
Therefore, it is clear that applicants should think very carefully about what they wish to protect when deciding which images of their design to file. As a general rule it seems that if applicants wish to be able to enforce their registrations against others offering products which create the same overall impression of the shape of their goods (regardless of colours, colour contrasts, decoration etc), they may be best served by filing line drawings. If surface decoration, graphic symbols, materials and/or colour juxtapositions are important to them, it may be sensible to file CAD drawings or photographs. If particular colours of the product are important to them, it may be wise to file in colour instead of, or in addition to, black and white images.
Even more care needs to be taken when an applicant only wishes to protect part of the product shown in the images filed with the application. Whilst the legislation itself is unclear on the point, OHIM take the view (which appears to have some level of support in the Supreme Court) that features of the images drawn with broken lines, or which have been circled, should be considered not part of the registered design, and so not contributing to the overall impression. For example, if one is filing line drawings of a shower cubicle with built in taps, though only wishes to seek protection for the design of the cubicle, not the taps, one may choose to draw the taps in broken lines, or circle them, before filing the application.
In an ideal world it is often safest to file an application featuring several designs. One featuring just line drawings to protect the shape alone, one featuring CAD drawings and/or photographs in black and white to protect surface decoration/colour juxtapositions in any colour, and as many as are necessary showing the product in all the colours for which it will be marketed. Fortunately, design applications may include more than one design (each of which will be separately protected), and the cost of adding additional designs to the same application are relatively low.
In any case, 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.
