Who: Magmatic Limited v PMS International Limited
Where: Patents Court, London
When: 11 July 2013
Law stated as at: 24 July 2013
In this recent case from the Patents Court, Magmatic Limited (who manufacture and sell the children’s ride-on suitcase called the “Trunki”), brought a claim again PMS International Limited (PMS), who import and sell a similar design called the “Kiddee Case”.
Magmatic claimed that PMS had infringed the following intellectual property rights vesting in the Trunki: Community Registered Design (CRD); design rights; copyright in the artwork for the packaging; and copyright in the safety notice that appears on the packaging (this was conceded at trial).
Mr Law, the founder of Magmatic, won a competition for a child’s ride-on suitcase called the Rodeo in 1997 whilst at university. He was presented the award during a public ceremony.
Mr Law continued to develop this design into the Trunki, which continues to win awards and enjoy commercial success. PMS manufactured a discount version of the Trunki, called the Kiddee Case, which was shipped to the UK in December 2012.
Obscure disclosure exception
CRDs are governed by the Community Designs Regulation (CDR) (6/2002/EC) which states that, in order to be protected, the designs must be “new” and have “individual character” (Article 4). A CRD protects the owner from infringement from “any design which does not produce on the informed user a different overall impression” to the CRD (Article 10 CDR).
One of PMS’s key arguments was that the Trunki design itself was not novel due to its similarity with the Rodeo design, which had been publically disclosed. In response Magmatic sought to rely upon the obscure disclosures exception which applies when the disclosure in question could not reasonably have become known, in the normal course of business, to persons specialising in that sector in Europe (i.e. suitcase specialists). Arnold J held that it was not unreasonable for suitcase specialists to have become aware of the Rodeo. The fact that the award was for plastics design did not preclude it from reaching a wider audience. The award was well-known in the field of product design and the theme of the competition that year was luggage. Arnold J also stated that the burden was on the claimant to prove that the exception applied as they were relying on it. In this instance he held that Magmatic had not discharged the burden of proof and the obscure designs exception did not apply.
However, Arnold J did state that, given the Rodeo’s relative obscurity, it was not to be counted as part of the design corpus. This is the range of designs of which the informed user would be aware.
The design corpus is used as a comparator when considering whether the CRD is novel, has an individual character and is ultimately valid.
The “informed user’, who in this case was a 3-6 year old child, a parent or a carer of such a child, would not have been aware of the Rodeo as it was never publically marketed or distributed. As a consequence, the design corpus was adult clamshell suitcases and the Trunki was both novel and individual compared to them.
Arnold J stated that the CRD represented a considerable departure from the design corpus (adult clamshell suitcases) and that this meant that it was entitled to a broad scope of protection against possible infringement.
Consideration of the overall impression
Arnold J then went onto consider the overall impression of the CRD and Rodeo. This was because PMS were claiming that if the Kiddee Case did infringe the CRD, then the CRD lacked individual character over the Rodeo. However, Arnold J stated that the basic shapes of the products were different; the CRD had a more complex shape; and the Rodeo was more “crude” and “old-fashioned” than the more modern looking CRD. The overall impression was therefore different.
Secondly he compared the CRD to the Kiddee case. Arnold J stated that the CRD only gives protection for the shape of the object and therefore he ignored the graphics on the suitcases. He concluded that “the overall impression the Kiddee Case creates shares the slimmer, sculpted, sophisticated, modern appearance, prominent ridge and horn-like handles and clasps looking lie the nose and tail of an animal which are present in the CRD, but which are absent from the Rodeo.”
He therefore held that the overall impression produced by the Kidee case was the same as the CRD and, as a consequence, PMS had infringed the CRD.
Design rights and copyright infringement?
In terms of design rights, Magmatic claimed that PMS had infringed: (a) the metal parts of the clasps; (b) the clasp as a whole; (c) the outside of the case; (d) the inside of the case – straps and pouch; (e) combination of designs; and (f) the tow strap of the Trunki. Arnold J partially allowed the claim that PMS has infringed Magmatic’s designs in (a), (b), (d) and (f). However he found that the designs claimed for (c) were more akin to a patent claim rather than an identification of particular aspects of the Trunki design and were therefore not valid design rights capable of infringement.
Where arguments of copyright infringement were concerned, Arnold J concluded that the two artworks were not similar enough to amount to a reproduction of a substantial part of the Trunki artwork and copyright was therefore not infringed.
Why this matters:
There is very little discussion in case law on the ‘obscure disclosures’ exception and this case gives some useful guidelines on this topic. For instance, Arnold J confirmed that the burden of proof lies on the party seeking to rely on the exception. This case also indicates that an obscure prior design can be part of the prior disclosure but will not form part of the design corpus of which the informed user will be aware. This is an interesting dilemma and means that this design will not form part of the knowledge of the “informed user” when assessing whether the design is novel and has an individual character. In addition, the fact that the graphics on an infringing item should be discounted when comparing the overall impression to the CRD will be welcome news to owners of CRDs as it means that largely cosmetic differences will not prevent findings of infringement.