In its long awaited judgment, handed down yesterday, the Supreme Court found against Magmatic and for the defendant PMS. Despite the fact that PMS copied the Trunki, the Court of Appeal was right to find that the Kiddee Case was not similar enough to Magmatic's Registered Community Design to infringe.
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Magmatic suffered two disadvantages. Firstly, Robert Law (the designer of the Trunki) had, some years before filing his design, entered and won a design contest with a prototype of the Trunki called the Rodeo. That prior disclosure ruled out getting patent protection, and limited the scope of his subsequent design filings.

 

Secondly, the design in question consisted of CAD rendered greyscale images, in which the wheels and strap were darker than the body of the case, whereas both the Trunki and the Kiddee Case were brightly decorated. The design was filed in the first few months of the Community Design system, without professional representation, at a time when no official Guidelines or other material were readily available.

 

 

The Trunki

 

 

The Kiddie Case

 

At first instance, the trial judge held that the design was directed to shape alone, and did not involve surface decoration, and that the scope was broad enough (just) to cover the Kiddee Case without being invalid over the Rodeo. The Court of Appeal disagreed on both points, and the Supreme Court upheld them.

 

The Supreme Court's decision was a classic application of common law analysis. They point out that parties can protect either the shape, or the ornamentation, or any other aspect of the design of a product, alone or in combination and that it is cheap to file as many design registrations for the same product as desired. Applicants therefore have a very broad freedom to select how they protect their designs through registration, and once they have made their choices, they are stuck with what they filed – the design is to be interpreted through the registered images, in their proper context. The Supreme Court declined to offer guidance on the practice of filing designs, but they clearly indicated that if a designer wishes to protect shape alone, line drawings are much more likely to succeed.

 

This is bad news for the many designers who, like Robert Law in this case, file their own designs using CAD images, which are familiar to them and are easy and cheap to generate. Such images may be held not to protect the shape of a product, but the shape carrying no adornment. Mr Law was at least lucky that he did not try to enforce his earlier UK design registration 3004793, another CAD image in which the different parts of the product were rendered in three contrasting colours – he would certainly have been held to those colour choices had he done so.

 

Mr Law is quoted as saying that the Supreme Court are "sending knights into battle without armour". However, the problem is really that Magmatic attacked using only home-made weapons. Intellectual Property is a complex area, and professional support is essential. We note that Magmatic are now professionally represented, and that they have since around 2011 started using line drawings instead of CAD rendered images to protect their designs. Other designers would be well advised to do the same.

 

A link to the decision can be found here.