On 18 April 2014, Reddie & Grose presented a review of a Court of Appeal decision concerning a Community Registered Design (CRD) relating to children’s ride-on suitcases. Here, nearly two years later, we review the judgment of the Supreme Court which maintains the Court of Appeal decision.
To recap, Magmatic Ltd alleged infringement of their CRD (No. 43427-0001), for a suitcase marketed as Trunki, by PMS International Ltd and their Kiddee case. In a 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 suitcase shape and the position of the handles and clasp, which gave the appearance of a horned animal. Reaching a tentative decision, Arnold J ruled that the Kiddee case gave an overall impression that was the same as the suitcase represented in the Magmatic CRD and therefore infringed the CRD.
After moving to the Court of Appeal, Arnold J’s decision was overturned on the basis that, when taking the surface decoration of the Kiddee cases into account, the Kiddee cases did not give an overall impression of a horned animal. The Court of Appeal found that, although the Magmatic CRD was not limited to a particular surface decoration, it was nonetheless necessary to take such into account when determining the overall impression conveyed by the Kiddee cases. The Court of Appeal also regarded the black colouring of the wheels and strap in the representations of the Trunki in the Magmatic CRD to be significant, despite the representations being monochrome. Specifically, the Court of Appeal found contrasting wheels and straps to be an essential feature of the Magmatic CRD, and something not present on the Kiddee cases.
Unhappy with the outcome at the Court of Appeal, Magmatic Ltd appealed to the Supreme Court; however, in the judgement given on 9th March 2016, the Supreme Court upheld the Court of Appeal decision. In particular, the Supreme Court agreed with the Court of Appeal’s view that Arnold J made a series of errors in reaching his decision in the High Court.
Firstly, the Supreme Court noted that although Arnold J regarded the CRD as being limited to a suitcase giving the overall impression of a horned animal when considering novelty of the CRD with respect to the earlier Rodeo suitcase, Arnold J did not apply the same limitation when considering infringement of the CRD by the Kiddee case.
Secondly, Arnold J was criticised for failing to appreciate the significance of the lack of surface decoration in the representations of the CRD and the presence of surface decoration on the Kiddee cases. Specifically, the Supreme Court considered that the lack of surface decoration in the CRD representations was itself a feature of the registered design, particularly since the lack of surface decoration contributed to the overall impression of the design being that of a horned animal.
On this point, the Supreme Court noted that in cases where a lack of surface decoration forms part of the design, the fact that a potentially infringing article includes a surface decoration is not a sufficient reason on its own to establish non-infringement. However, in such cases, the Supreme Court considers it correct to take such surface decoration into account when deciding whether, overall, an article infringes a design.
Therefore, when considering the first and second of Arnold J’s errors together, the Supreme Court agreed with the Court of Appeal’s view that the surface decoration of the two Kiddee cases in question was such that the first Kiddee case gave the overall impression of a ladybird, with the handles forming antennae, and the second Kiddee case gave the overall impression of a tiger, with the handles forming ears. As such, neither of the Kiddee cases gave the overall impression of a horned animal, which was deemed to be a requirement of the CRD.
Finally, a third criticism of Arnold J’s decision concerned the two-tone colouring of the representations of the CRD. Specifically, although Arnold J regarded the CRD as relating only to the shape of the suitcase and therefore ignored any and all decoration in the monochrome CRD representations, both the Court of Appeal and the Supreme Court took the view that the wheels and the strap being depicted in a contrasting black on the CRD was a feature of the design, and a feature lacking in the Kiddee cases. In the Supreme Court’s view, the wheels and the strap could easily have been depicted in the CRD representations using the same colour as the rest of the suitcase, and as such the contrasting nature of the wheels and the strap compared to the rest of the suitcase must form part of the design.
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 any action in reliance on it.
Author
Ian Dowling
Principal Associate
About the author