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The Trunki case - supremely unhelpful to pro se applicants?

The Supreme Court of the United Kingdom is only seven years old in name, but it is the successor to the venerable Judicial Committee of the House of Lords. It has been over twenty years since either of them looked at a Registered Design case, during which time UK design law has been revolutionised by the arrival of the Community Design system, and an EU-wide harmonisation of design law. Magmatic v PMS Products was therefore watched with interest (bordering on fascination) by the IP community, who had the luxury of watching the trial and the handing down of the judgment on video.
The case concerned a children’s suitcase on wheels, on which a child can ride (either under its own steam or pulled by a parent). The current colourful commercial products have animal faces of various kinds. The design in suit, RCD 43427-0001, was filed by the designer Robert Law in June 2003, within the first three months of the Community Design system, apparently without professional assistance. It consisted of monochrome rendered images produced by a CAD package, showing the design from front, back, top, both sides and in two perspective views (no bottom view was present).

Mr Laws had the idea for a ride-on suitcase some years before, and in 1998, when he was a student, his initial design (the RODEO) won an award and was published as a result.

PMS Plastics, the defendant, saw the TRUNKI and produced their own competing design, the KIDDEE CASE. Unsurprisingly, Magmatic sued them in the UK for design infringement. At first instance in 2013, the trial judge held that the design was directed to shape alone, and did not involve surface decoration, and that the scope was broad enough (just) to cover the KIDDEE CASE without being invalid over Mr Law’s own prior disclosure of the RODEO.

Things went less well in the Court of Appeal, where the defendant raised some new arguments about the interpretation of the design in suit. These arose from the way the design was represented. Some of the different greys in the images are due to a virtual lighting effect intended to show the shape. However, the wheels (and the strap) are clearly rendered in a darker shade than the rest of the design. It was argued that this was merely intended to show that they were separate components (a functionality of some CAD packages), but the Court of Appeal saw no evidence of this, particularly since some other parts which were clearly separate components were not a different shade of grey.

They therefore found that the TRUNKI design was not to shape alone but a combination of shape and shade. This led them to infer that it was unadorned, which in turn (since there was no adornment to indicate to the contrary) led them to the view that the impression created by the design was that of a horned animal. Due to their surface decoration the various infringements appeared to have antennae or floppy ears, but did not give the impression of horned animals. Magmatic therefore lost.

There was immediate concern, not least from the UK Intellectual Property Office. In recent years, the overwhelming majority of UK registered design applications have been filed by unrepresented applicants, and a significant proportion of these use CAD images. Alerted to the issue by an energetic campaign mounted by Mr Law and design lobby ACID (Anti Counterfeiting in Designs), many of them voiced concern that their designs were now worthless. Magmatic therefore sought leave to appeal. The Court of Appeal refused it, but the Supreme Court granted leave themselves.

In the appeal, unusually, the Intellectual Property Office was also represented. They asked for a referral of various questions to the European Court of Justice, as (conditionally) did the parties.

During the one day trial last November, the Supreme Court made it apparent that they were reluctant to refer. In their judgment, which issued in March 2016, they explained why: “All the criticisms made by the Court of Appeal raise the question of how to interpret particular images on a particular Community Registered Design. I do not consider that these criticisms raise a point of EU law, or indeed a point which is suitable to be referred to the CJEU. If we were to refer such an issue to the CJEU, it appears to me that they would say that we should interpret the images on a Community Registered Design by reference to how it would appear to a reader in the light of the terms of the Principal Regulation, the Implementation Regulation and the practice of OHIM .”

As to the practice of OHIM  (or the EUIPO as it now is), the Supreme Court referred to the various Manuals and an article by an OHIM  official (none of which had in fact existed at the date of filing of the design in suit). More generally, they indicated that each drawing should be interpreted in context: “Many line drawings simply show a physical shape, but while they can show colouring and decoration, they are generally less appropriate for that purpose than photographs or CAD images, which can easily show subtle shadings and contours, as well as decoration, such as colours and ornamentation. “[b]asically, the broadest claims can be achieved by drawings showing only the contours of the design. In contrast, a photo specifies not only the shape, but the surface structure and the material as well, thereby narrowing the scope of protection accordingly.”  It is interesting to note that whilst all of the 11 Community Designs filed by Magmatic themselves prior to 2011 used rendered images, all of the 47 filed thereafter have used line drawings.

As a result, they upheld the Court of Appeal. They regretted being unable to find for Magmatic, as “the conception ... seems to have been both original and clever; ... Furthermore, it appears clear that Mr Beverley of PMS conceived the idea of manufacturing a Kiddee Case as a result of seeing a Trunki, and discovering that a discount model was not available. Unfortunately for Magmatic, however, this appeal is not concerned with an idea or an invention, but with a design.”

There are a number of practical lessons to learn from this case.

The first is that applicants have wide freedom in what they file, but have to live with the consequences: “It is, of course, up to an applicant as to what features he includes in his design application. He can make an application based on all or any of “the lines, contours, colours, shape, texture … materials … and/or … ornamentation” of “the product” in question. Further, he can make a large number of different applications, particularly as the Principal Regulation itself provides that applications for registration have to be cheap and simple to make. ... Accordingly, it is right to bear in mind that an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses. Further, ... an applicant should appreciate that it will almost always be those images which exclusively identify the nature and extent of the monopoly which he is claiming.”

The second is that, given the potential value of design rights, care is required if applicants are to get the scope they deserve.

And the third is that they will only get it right with advice from professionals with the training and experience in the practice under Europe’s design protection system to know what to file.