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Supreme Court Agrees to Call a Ladybird a Ladybird

The 9 March 2016 judgment of the Supreme Court concludes the saga between PMS International Group Plc and Magmatic Limited.  Magmatic, who make the “Trunki” suitcase, have exhausted all avenues available for obtaining a decision that the PMS “Kiddee Case” infringes their design rights.

Lord Neuberger and his colleagues in the Supreme Court failed to find any “material error” in Lord Justice Kitchin’s 2014 Court of Appeal decision. Therefore, Magmatic’s appeal was dismissed.  In the Court of Appeal, considering all the relevant features of Magmatic’s Community design and the Kidee Cases, the overall impression of Magmatic’s design, namely that of a “horned animal”, was found to be different to the overall impression of the Kidee Cases, namely that of a Ladybird or a Tiger (which are not horned animals).  Thus there was no infringement.

This Supreme Court decision confirms Kitchin LJ’s opinion that in representing a design by rendered CAD drawings having tonal contrast, the features that should be considered in determining the overall impression on the informed user, and therefore infringement, were not limited to just shape but also extended to ornamentation and tone.

The overall impression of the Magmatic design was influenced in part by its lack of ornamentation and as Lord Neuberger opined, “minimalism can self-evidently be an important aspect of a design just as intensive decoration can be”.  Parallels were drawn with Samsung Electronics (UK) Ltd v Apple Inc [2013] ECDR 1 and [2013] FSR 9, in which the notion that absence of ornamentation can be a feature of a registered design, even where the images consist of line drawings, was accepted by His Honour Judge Birss QC and the Court of Appeal.

From a practitioner’s perspective, the decision confirms the importance of carefully considering the representations filed with a design application and the impression they create.  The applicant for a registered design is free to choose how he represents his design, just as an applicant for a patent is free to choose what he claims in his patent application.  The same amount of care should be taken not to represent inessential features in a design application as one would take not to claim inessential features in a patent application.  Filing multiple designs in a single application effectively provides fall-back options analogous to the dependent claims of a patent.

Further, this decision confirms that the broadest protection for the shape of a product is afforded by representations in the form of line drawings.  Although it may save cost in the short-term, the temptation to re-use rendered CAD drawings instead of preparing line drawings should be avoided.

29 March 2017

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