The parties disputed an alleged infringement of a registered design in the Trunki, a child’s suitcase designed to be ridden on, and other infringements of copyright in the packaging. PMS now appealed on the issue of whether the defendant’s Kiddee Case infringed the CRD.
Held: The appeal succeeded. The judge had made two errors. First the CRD images were not ‘simple line drawings’, but ‘three dimensional images which . . show the effect of light upon [the suitcase’s] surfaces’, and ‘Further and importantly, the suitcase looks like a horned animal with a nose and a tail, and it does so both because of its shape and because its flanks and front are not adorned with any other imagery which counteracts or interferes with the impression the shape creates. As Mr Vanhegan submits, the CRD is, in that sense, relatively uncluttered and it conveys a distinct visual message. Here then the first of the judge’s errors can be seen: he failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal.’ The CRD images were ‘shown in monochrome’, and the design claimed was ‘not limited to particular colours’, so that ‘PMS cannot point to the colour of the Kiddee Case as being a point of distinction’, and ‘That is not the end of the analysis, however, because each of the representations shows a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other. I have given anxious consideration to whether this is simply an artefact of the computer generation process or a visual cue to indicate that the wheels and the strap are each separate components. However, I do not find either of these alternative explanations convincing. The clasps are also separately functioning components and they are not shown in a contrasting colour and it seems to me that the wheels could perfectly well have been shown and depicted as separate components in the same colour as the rest of the body. Moreover, depicted as they are and standing as they do at the four corners of the animal, the wheels are, to my eye, a rather striking aspect of the design as a whole.’
The second error was the judge’s failure to allow for ‘the colour contrast between the wheels and the body of the CRD’. This contrast as ‘a fairly striking feature of the CRD’ which was ‘simply not present in the accused designs’, and which ‘was another matter which the judge ought to have taken into account in carrying out the global comparison.’
Moses, Black, Kitchin LJJ
[2014] ECDR 20, [2014] RPC 24, [2014] EWCA Civ 181
Bailii
Council Regulation (EC) No 6/2002
England and Wales
Citing:
At PatC – Magmatic Ltd v PMS International Ltd PatC 11-Jul-2013
The claimant manufactured and sold the ‘Trunki’ a child’s ride on suitcase. The defendant imported and sold a similar product. Claims were now made alleging infringement of (i) Community Registered Design, (ii) design rights in a number of designs . .
Approved – Procter and Gamble Company v Reckitt Benckiser (UK) Ltd CA 10-Oct-2007
The claimant alleged infringement of its design right by the defendants’ Air-Wick product. The court considered the approach necessary in asking whether a European Community design had been infringed.
Held: Looking at an article for this . .
Cited by:
At CA – PMS International Group Plc v Magmatic Ltd SC 9-Mar-2016
Overall Impression of Design is a Judgment
The respondent had alleged infringement of its registered design in the ‘Trunki’, a ride-on children’s suitcase. At first instance, the judge had held that the surface decorations were to be ignored. On appeal it had been held that the judge had . .
Main CA – Magmatic Ltd v PMS International Ltd CA 10-Apr-2014
Post appeal assessments as to costs etc for final order. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 01 December 2021; Ref: scu.521936