This morning Lord Neuberger handed down the judgment of the UK Supreme Court in the Trunki case, PMS International Limited v Magmatic Limited  UKSC 12. The Court dismissed the appeal filed by Magmatic, owners of the Community registered design (CRD) for Trunki ride-on suitcases, and thereby left intact the Court of Appeal's holding that PMS's Kiddee case did not infringe.
To remind readers of the designs in question, the image below shows the CRD, an example of the Trunki case and an example of the Kiddee case.
|From left to right: Magmatic's registered design; their Trunki case; and PMS's allegedly infringing Kiddee case|
At first instance, Arnold J held that there was infringement. He held that the "CRD is evidently for the shape of the suitcase, and the proper comparison is with the shape of the Kiddee Case." As a result, he agreed with magmatic's submission that that, "when comparing the CRD with the Kiddee Case, the graphical designs on the surface of the Kiddee Case are to be ignored." Comapring the respective shapes alone, and ignoring the markings on the side and the eyes at the front, he found that there had been infringement.
In the Court of Appeal, Kitchin LJ gave judgment and held that the trial judge had erred in two respects. Lord Neuberger, in analysing the appellate judgment, has in fact identified three criticisms made by the Court of Appeal.
1. The overall impression of a horned animal
Lord Neuberger held that the Court of Appeal was "clearly right". The overall impression of the CRD was that of a horned animal and this was not given proper weight at first instance.
31. Accordingly, 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, in the light of article 36(6), 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. As Dr Martin Schlötelburg, the co-ordinator of OHIM’s Designs Department, has written, “the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them”...He continues:
32. ... 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. That it may be said is a matter of practice rather than law, and if further guidance is needed it can be sought from other sources, such as OHIM.
The issue, of course, is that the applicant here chose to file with images that had two colour tones. This Kat suspects that at the time of filing the significance of the darker wheels and strap was not fully appreciated. However, Lord Neuberger's remarks suggest that such inattention to the visible features of a design representation is akin to filing a patent application without paying careful attention to each feature of the claims, or without recognising that claim integers really do limit one's protection. The claim says what it says, regardless of whether the applicant paid due attention to the wording being submitted, and likewise a design registration shows what it shows.
Lord Neuberger does put one issue firmly to rest - making it clear that black and white or monochrome representations cover all colours:
34. That this [i.e. colour is part of a design's scope only if colour is shown in the representations] has long been well established is supported by Dr Schlötelburg’s article, in which he wrote that “where a design is shown in colours, the colours are claimed, while a black and white drawing or photo covers all colours” -  EIPR 383, 385. Accordingly, as Kitchin LJ observed at para 42 of his judgment, “the various representations [in the CRD] are shown in monochrome, and so it must be concluded that this design is not limited to particular colours”, and therefore “PMS cannot point to the colour of the Kiddee Case as being a point of distinction”. There is, rightly in my judgment, no challenge to that conclusion, which is consistent with what was said by the Fourth Chamber of the General Court in Sphere Time v OHIM (Case T-68/10)  ECDR 20, para 82.
In deciding the merits between the two interpretations of the Trunki CRD, Lord Neuberger came back to the issue of choice (this Kat was continually reminded of Lord Diplock's classic statement in Catnic: "My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly."). Lord Neuberger echoed this statement regarding the right-holder's choices and the consequences flowing from choices made in the design field:
52. If, as in the case of the CRD, an applicant for a Community Registered Design elects to submit CADs of an item, whose main body appears as a uniform grey, but which has a black strip, a black strap and black wheels, the natural inference is that the components shown in black are intended to be in a contrasting colour to that of the main body... [emphasis added]The Court of Appeal was therefore correct to interpret the RCD as being limited to contrasting colours:
53. Accordingly, I consider that Kitchin LJ was right in concluding that the CRD claimed not merely a specific shape, but a shape in two contrasting colours - one represented as grey and the other as black on the images, and that Arnold J was correspondingly wrong in holding that the CRD was a claim simply for a shape. Once one concludes that a registered design claims not just a three dimensional shape, but a three dimensional shape in two contrasting colours, one colour for the body and another colour (or possibly other colours) for specified components, then it seems to me that it must follow that, when one compares the allegedly infringing article with that design on a “like for like” basis, one must take into account the colouring on that article. If the predominant colour of the first example of the Kiddee Case shown in para 4 above was the front part and was coloured red, then one would presumably compare it with the CRD on the basis that the CRD was principally coloured red, but that the wheels and spokes, strap and strips of the CRD were in a contrasting colour, and the Kiddee Case was differently coloured.Conclusion and cold comfort
Lord Neuberger thus found in favour of the Court of Appeal's approach on all three issues:
56. Given that the Court of Appeal was right to hold that Arnold J misdirected himself in the respects discussed above, I consider that they were, to put it at its lowest, entitled to hold that the judge materially misdirected himself, and that the Court of Appeal should reconsider the question of infringement for itself. For the reasons given in para 25 above, because the Court of Appeal addressed the question of infringement on the correct basis in law, this court should be very slow indeed to interfere with their conclusion that the Kiddee Case did not infringe the CRD. I see no grounds for questioning Kitchin LJ’s conclusion, even if I considered that another judge (or even I) might have reached a different conclusion.
57. I should perhaps add that, while it may be little comfort to Magmatic, I think I would have reached the same conclusion. It is a conclusion I would have reached with some regret, as the conception of the Trunki, a ride-on wheeled case which looks like an animal, seems to have been both original and clever; as Arnold J said at para 16 of his judgment, “[t]here is no dispute that the Trunki was an innovative design” and it “has won numerous awards and has been a significant commercial success.” Furthermore, it appears clear that Mr Beverley of PMS conceived the idea of manufacturing a Kiddee 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 a design.While the decision only issued this morning and will no doubt be pored over in the coming days and weeks, this Kat feels that the Supreme Court got it largely right. In particular on the third issue, it is difficult to see how any other conclusion could have been avoided as to the proper interpretation of the design. Once one accepts that the representations clearly do show contrasting colours for the wheels, then this must be taken into account in assessing similarity to other allegedly infringing designs.
The Supreme Court is certainly correct to say that if the overall impression is that of a horned animal then one must assess alleged infringements to evaluate if they too make the same impression. However, the decision slightly glosses over the fact that it was the surface decoration of the Kiddee case (giving the impression of an insect with antennae in one embodiment, or a tiger with ears in another) that distanced the overall impression from being that of a horned creature. The surface decoration given to many objects could either reinforce or dilute the impression of the unadorned shape. One could conceivably decorate many objects to distract from the underlying shape claimed in a registered design or to give a different impression from the unadorned shape.
However, while not completely solving this problem, a partial solution may lie in the use of traditional line drawings. The CAD rendered drawings in this case suffered fatally from having colour-contrasting wheels, but even without such tonal contrasts the court may regard CAD drawings as inherently more limited than a corresponding traditional line drawing. In para. 46, Lord Neuberger makes this point:
46. Two domestic cases are worth mentioning in this connection. In Procter & Gamble, the registered design was illustrated by line drawings, which were clearly concerned purely with external shape. Both Lewison J ( FSR 13) and the Court of Appeal held, as Jacob LJ put it at  FSR 8, para 40, that “[t]he registration is evidently for a shape. The proper comparison is with the shape of the alleged infringement. Graphics on that (or on the physical embodiment of the design) are irrelevant.” Many line drawings simply show a physical shape, as in Procter & Gamble, but while they can show colouring and decoration, 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. Accordingly, while each Community Registered Design image must be interpreted in its own context, a line drawing is much more likely to be interpreted as not excluding ornamentation than a CAD image. That is consistent with what Dr Schlötelburg wrote in the article from which I have already quoted, namely that “[b]asically, the broadest claims can be achieved by drawings showing only the contours of the design. In contrast, a photo specifies not only the shape, but the surface structure and the material as well, thereby narrowing the scope of protection accordingly” -  EIPR 383, 385. [emphasis added]All in all, the decision assists practitioners by emphasising the central importance of getting the representations right, strengthening the case for insisting that good drawings be prepared to maximise protection. There is no doubt much more that can be and will be said on Trunki before the dust has settled. The IPKat knows that the Institute of Trade Mark Attorneys is planning to hold an event on April 27 to discuss the topic, at which the great and the good of the design world will be speaking, including counsel for both sides in this case.