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 failed properly to allow for the overall impression of the design as registered design, had not taken into account the absence of decoration on the registered design reinforcing the horned animal impression and had wrongly ignored the colour contrast in the registered design. It was therefore free to form its own view on the question of infringement and concluded that the overall impression created by the two designs was very different and that, therefore, the defendant’s product did not infringe the registered design.
Held: The appeal failed. The Regulation protected a design to the extent that it was new and had individuality. The overall impression was key, and that was a matter of judgment.
Held: The Court of Appeal was right to hold that the design claimed in this case was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product, and were entitled to hold that the judge materially misdirected himself, and that the Court of Appeal should reconsider the question of infringement for itself.
No reference would be made to the ECJ because: ‘Minimalism can self-evidently be an important aspect of a design just as intensive decoration can be. It would be extraordinary if absence of ornamentation could not be a feature of a design, and, unsurprisingly, no authority has been cited to support such a proposition. On the contrary.’
Lord Neuberger, President, Lord Sumption, Lord Carnwath, Lord Hughes, Lord Hodge
UKSC 2014/0147, [2016] UKSC 12, [2016] WLR(D) 126
SC, SC Summary, SC Video, Bailii, Bailii Summary, WLRD
Council Regulation (EC) No 6/2002
England and Wales
Citing:
At CA – Magmatic Ltd v PMS International Ltd CA 28-Feb-2014
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 . .
At atPatC – 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 . .
CA Order – Magmatic Ltd v PMS International Ltd CA 10-Apr-2014
Post appeal assessments as to costs etc for final order. . .
Cited – Srl CILFIT v Ministero Della Sanita ECJ 6-Oct-1982
ECJ The obligation to refer to the Court of Justice questions concerning the interpretation of the EEC Treaty and of measures adopted by the community institutions which the third paragraph of article 177 of the . .
Cited – Designers Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
Cited – Sphere Time v OHMI – Punch (Montre Attachee A Une Laniere) ECFI 14-Jun-2011
ECFI Community design – Invalidity proceedings – Registered Community design representing a watch attached to a lanyard – Prior design – Disclosure of prior design – Individual character – Misuse of powers – . .
Cited – Lucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Cited – Piglowska v Piglowski HL 24-Jun-1999
No Presumption of House for both Parties
When looking to the needs of parties in a divorce, there is no presumption that both parties are to be left able to purchase alternative homes. The order of sub-clauses in the Act implies nothing as to their relative importance. Courts should be . .
Cited – Samsung Electronics (Uk) Ltd v Apple Inc PatC 9-Jul-2012
The court found that Samsung had not, in its tablet computers, infringed the registered design belonging to Apple, and granted a declaration accordingly. . .
Cited – Samsung Electronics (UK) Ltd v Apple Inc CA 18-Oct-2012
In a registered design claim, the line drawings included one or two small features (an opening catch and a rim around the edge), and the natural implication was that no other ornamentation was intended, a view supported by the fact that the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 11 November 2021; Ref: scu.560717