Supreme Court

Magmatic Ltd v PMS International Group plc (Comptroller General of Patents, Designs and Trade Marks intervening)

[2016] UKSC 12

[2016] WLR (D) 126

2015 Nov 3; 2016 March 9

Lord Neuberger of Abbotsbury PSC, Lord Sumption, Lord Carnwath, Lord Hughes, Lord Hodge JJSC

Design — Community registered design — Infringement — Claimant registering design for ride-on suitcases for children — Suitcases designed to look like animal with horns — Design images showing distinct tonal contrasts but no surface decoration — Defendant selling similar product decorated to look like animals with ears or insects with antennae — Whether infringing registered design — Whether producing on informed user different overall impression — Whether lack of ornamentation in registered design relevant — Council Regulation (EC) No 6/2002, art 10

Facts
The claimant owned a Community registered design in respect of a children’s ride-on suitcase which was designed to look like an animal with horns. The registered design consisted of six images in monochrome, with distinct tonal contrasts but no surface decoration. Subsequently the claimant made and sold ride-on suitcases the shape of which was very similar to that of the registered design but with different colouring and ornamentation, such as nose and feet markings and spots. The defendant started selling similar products, which looked like animals with ears or insects with antennae and were brightly coloured and decorated with markings, such as eyes, spots and whiskers. The claimant brought proceedings claiming that the defendant had infringed its registered design, on the basis that its suitcases did not “produce on the informed user a different overall impression”, within article 10 of Council Regulation (EC) No 6/2002. The judge held that the registered design was for the shape of the suitcase and that, therefore, the graphical designs on the surface of the defendant’s suitcases were to be ignored and he allowed the claim. On the defendant’s appeal, the Court of Appeal concluded that the judge had (i) failed to give proper weight to the overall impression of the registered design as an animal with horns, (ii) failed to take into account the fact that the absence of decoration on the registered design reinforced the horned animal impression and (iii) wrongly ignored the colour contrast in the registered design, and accordingly held that it was 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.

On the claimant’s appeal—

Held

Held, appeal dismissed. Council Regulation (EC) No 6/2002 protected a Community registered design to the extent that it was new and had individual character and, in considering the applicability of that protection, what mattered was the overall impression created by the design. The determination of whether an item infringed a registered design involved a judgmental conclusion, and an appellate court should only interfere with the judgment of the trial judge if he had erred in principle. It was unrealistic to expect a trial judge in every case to refer to all the points which had influenced his decision, but when a judge had given a full and careful judgment, identifying a large number of points which weighed with him, an appellate court could properly conclude that his failure to mention a significant point meant that he had overlooked it. The judge had conducted a detailed analysis of the similarities and differences between the registered design and the defendant’s design but had not specifically referred to the fact that the overall impression given by the registered design was that of a horned animal and, therefore, the Court of Appeal had been justified in its conclusion that the judge had failed to give proper weight to that fact. The Court of Appeal was also correct in its other criticisms of the judge’s judgment. Accordingly, the Court of Appeal was entitled to hold that the judge had materially misdirected himself and to reconsider the question of infringement for itself. The Court of Appeal had addressed that question on the correct basis and there were no grounds for questioning its conclusion (paras 6–10, 24–26, 37–39, 41–43, 49, 53–56, 61).

Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] Bus LR 801, CA applied.

Piglowska v Piglowski [1999] 1 WLR 1360, HL(E) considered.

Per curiam

Per curiam (i) An applicant for a design right is entitled, within very broad limits, to submit any images which he chooses but he should appreciate that it will almost always be those images which exclusively identify the nature and extent of the monopoly which he is claiming (para 31).

(ii) Absence of decoration can, as a matter of principle, be a feature of a registered design. Whether it is a feature of a particular design right must turn on the proper interpretation of the images on the registered design. If absence of ornamentation is a feature of a registered design, that does not mean that because an item has ornamentation, it cannot, for that reason alone, infringe the registered design in question: it merely means that the fact that an allegedly infringing item has ornamentation is a factor which can be taken into account when deciding whether or not it does infringe that design (paras 44–45).

Appellate History

Decision of the Court of Appeal [2014] EWCA Civ 181; [2014] RPC 24 affirmed.

Appearances

Michael Hicks and Jonathan Moss (instructed by Briffa) for the claimant.

Mark Vanhegan QC and Chris Aikens (instructed by Gordons Partnership LLP) for the defendant.

Brian Nicholson (instructed by Treasury Solicitor) for the Comptroller General of Patents, Designs and Trademarks, intervening.

Reported by: Jill Sutherland, Barrister