Back in September we reported on the result of the Magmatic v PMS case in which the Trunki faced off against the Kiddee Case at the High Court before the Hon. Mr Justice Arnold. At the High Court, PMS’s Kiddee case was found to infringe Magmatic’s Community Registered Design (CRD) for the Trunki.

However, PMS were given leave to appeal the case, and in January the case was heard in the Appeal Court before Lord Justice Moses, Lady Justice Black and Lord Justice Kitchin. The judgement has just been made available, and reveals that the Appeal Court reversed the High Court’s judgement, and ruled that the Kiddee case did not, in fact, create the same overall impression as Magmatic’s CRD, and so did not infringe. IPcopy takes you for another ride through the suitcase-animal fair…

In the appeal case, PMS argued that the Hon. Mr Justice Arnold had “wrongly interpreted the CRD and improperly excluded from his consideration various aspects of the design of the Kiddee Case”. These “various aspects” were, in particular, the colours and surface decoration of the Kiddee Case.

To recap: Magmatic’s CRD was filed as greyscale images. PMS had argued that the greyscale should be interpreted as a ‘colour’ and that the CRD therefore only offered protection for a grey-coloured case. PMS argued that the colours and surface ornamentations of the Kiddee Case should be taken into account when assessing the overall impression of the case. The Hon. Mr Justice Arnold disagreed, and formed the view that since the CRD was clearly for a shape, only features of shape should be considered.

The Appeal Court considered this opinion, and agreed that the CRD should not be restricted to the particular grey colour of the greyscale drawings.

However, the  Rt. Hon. Lord Justice Kitchin noted that whilst the greyscale drawings do not show a particular colour, they do show “a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other”, and that this contrast should be taken into consideration when assessing the overall impression.

The  Rt. Hon. Lord Justice Kitchin also noted that the lack of surface ornamentation of the CRD should not be dismissed as irrelevant: a lack of surface ornamentation can be considered a design feature, for example as in the Samsung v Apple case [2012] EWCA Civ 1339, and the lack of surface ornamentation in the CRD compared to the presence of surface ornamentation on the Kiddee Case does affect the overall impression of the case.

Against this background, the Appeal Court re-assessed the overall impressions of the Kiddee Case and the Trunki CRD and found that the Kiddee Case created a different overall impression to the CRD, and so did not infringe. In particular, the court found that, considered globally and taking into account the surface ornamentation (or lack thereof), the Trunki CRD created the impression of a horned animal, while the Kiddee Case created the impression of a ladybird with antenna, or a tiger with ears.

The take-home message is that filing greyscale drawings rather than black and white line drawings really can impact on the scope of a CRD – stick to the line drawings where you can!

Emily Weal 4 March 2014