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England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Magmatic Ltd v PMS International Ltd  EWHC 1925 (Pat) (11 July 2013)
Cite as:  EWHC 1925 (Pat)
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Fetter Lane, London, EC4A 1NL
B e f o r e :
| MAGMATIC LIMITED
|- and -
|PMS INTERNATIONAL LIMITED
Richard Hacon and Chris Aikens (instructed by Gordons Partnership LLP) for the Defendant
Hearing dates: 6-7, 10-11 June 2013
Crown Copyright ©
MR JUSTICE ARNOLD :
|The development of the Trunki||3-16|
|The development of the Kiddee Case||17-30|
|The claim for infringement of the CRD||31-78|
|Key provisions of the Regulation||32|
|The informed user||42-43|
|The existing design corpus||44-46|
|The designer's degree of freedom||47|
|Effect of design freedom on the scope of protection||48|
|Effect of differences between the registered design and the|
|design corpus on the scope of protection||49-51|
|The informed user||55|
|The design corpus||56-58|
|The designer's degree of freedom||59-60|
|Scope of protection of the CRD||61|
|Overall impression: the CRD versus the Rodeo||62-64|
|Overall impression: the CRD versus the Kiddee Case||65-77|
|The claim for infringement of design rights||79-100|
|Method or principle of construction||83|
|Exactly or substantially to the design||86|
|The designs relied on||87|
|Did Mr Law create design A?||88|
|Are designs C-F designs?||89-93|
|Are designs C-F methods or principles of construction?||94-95|
|Are designs C(2) and C(3) original?||96|
|Is design D commonplace?||97|
|Have the designs been infringed?||98-99|
|The claim for infringement of copyright||101|
|Summary of conclusions||102|
|Annex 1: The Rodeo concept board||Annex 1|
|Annex 2: the CRD, Trunki Mark I and Kiddee Case||Annex 2|
|Annex 3: Magmatic's Particulars of Designs||Annex 3|
The development of the Trunki
The development of the Kiddee Case
The claim for infringement of the CRD
Key provisions of the Regulation
(14) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.
Requirements for protection
1. A design shall be protected by a Community design to the extent that it is new and has individual character.
1. A design shall be considered to be new if no identical design has been made available to the public:
(b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
2. Designs shall be deemed to be identical if their features differ only in immaterial details.
1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:
(b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.
Scope of protection
1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."
"66. … How then did the exception to absolute novelty come about? The travaux are clear about this. It came about by reason of a specific piece of lobbying by the textile industry. It was a concern about counterfeiting and nothing to do with an intention that prior art, obscure in the field of intended use, should be discounted.
67. The Economic and Social Committee opinion of 1994 said this when considering the novelty provision:
'3.1.2 This provision, as worded, would be difficult to apply in many fields, and particularly in the textiles industry. Sellers of counterfeit products often obtain false certification stating that the disputed design had already been created in a third country.
3.1.3 In these circumstances, the aim should be dissemination to interested parties within the European Community before the date of reference.
3.1.4 In the light of the above considerations, article 5(2) might be worded as follows: "A design shall be deemed to have been made available to the public if it has been published following registration, exhibited, used in trade or otherwise disclosed, unless this could not reasonably be known to specialist circles in the sector in question operating within the Community before the date of reference."'
68. This is clearly the forerunner of the exception in article 7. The Economic and Social Committee's suggestion was taken up, extended also to the individual character test and became the law. It is worthwhile quoting the Commission's explanation for the proposed exception contained in its 1966 amended proposal:
'… article  has furthermore been amended in accordance with the wishes of the European Parliament and the Economic and Social Committee through the introduction of what is commonly known as the "safeguard clause". Its aim is to protect the design industry from claims that a design right is not valid because there was an earlier design in use somewhere in the world where the European industry could not possibly have been aware of it. The intention of this provision is to avoid the situation where design rights can be invalidated by infringers claiming that antecedents can be found in remote places or museums.'
69. As Mr Hacon observes, for the exception to work as intended the sector concerned had to be that of the cited prior art. His example demonstrates this:
'If the registered Community design was in respect of a design for, say, teapots and the alleged prior art was for Columbian textiles, it would be the textiles circles in Europe who would be in a position to know whether the "certification" was genuine. Ex hypothesi the teapot circles would never know."
70. Moreover the exception was clearly conceived as narrow - it was aimed at obscure prior art only: it meant that forging this would not help an infringer.
71. Although there were further travaux before the ultimate Regulation, there was no significant relevant further change."
"33. The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo Inc v Grupo Promer Mon-Graphic SA (C-281/10 P)  FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM (T-9/07)  ECDR 7, (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM (T-153/08), judgment of 22 June 2010.
34. Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:
i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46).
ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).
35. I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59)."
"72. In the specific assessment of the overall impression of the designs at issue on the informed user, who has some awareness of the state of the prior art, the designer's degree of freedom in developing the contested design must be taken into account. … the more the designer's freedom in developing the contested design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user.
82. In the absence of any specific constraint imposed on the designer, the similarities noted in – above relate to elements in respect of which the designer was free to develop the contested design. It follows that those similarities will attract the informed user's attention…"
" … as the Board of Appeal pointed out at paragraph 19 of the contested decision, in so far as similarities between the designs at issue relate to common features, such as those described at paragraph 67 above, those similarities will have only minor importance in the overall impression produced by those designs on the informed user. …"
"… if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is 'surrounded by kindred prior art' (H.H. Judge Fysh's pithy phrase in Woodhouse at ). It follows that the 'overall impression' created by such a design will be more significant and the room for differences which do not create a substantially different overall impression is greater. So protection for a striking novel product will be correspondingly greater than for a product which is incrementally different from the prior art, though different enough to have it own individual character and thus be validity registered."
i) Clamshell cases with substantially rectangular bases.
ii) Clamshell cases with clasps on the front and rear.
iii) Clamshell cases with four wheels, one on each corner.
iv) Clamshell cases with a ridge where the clamshell portions meet, such ridge running along the front, top and rear side of the case.
v) Clamshell cases with a strip located between the two clamshell portions which protrudes from the case so that it is approximately level with the top of the ridge.
vi) Cases with eyelets at the top front and top back of the case.
"… I should record that [counsel for the defendant], under a little pressure from the Court, abandoned his point about decoration, rejected by the judge at –. He was right to do so. The registration is evidently for a shape. The proper comparison is with the shape of the alleged infringement. Graphics on that (or on the physical embodiment of the design) are irrelevant."
i) A substantially rectangular portable luggage case with the sides being slightly curved.
ii) A saddle shaped top.
iii) Four wheels on a substantially rectangular base located close to the end of the long side of this base.
iv) Two horns/protrusions located at the top of the front of the case.
v) A ridge running up the front and back of the case wherein the middle of the ridge contains a thin strip running generally along the length of the ridge.
vi) The thin strip located in the ridge stopping for the clasps on the front and back and stopping for the eyelets.
vii) A ridge running along the top of the case wherein the ridge flares out to form an oval in the middle of the top of the case.
viii) A curved clasp on the front and back of the case located in the middle of the ridge and slightly above the visual centre of the front and back of the case.
ix) The clasp on the front being located below the horns so as to give the impression of animal characteristics.
x) Two eyelets located in the ridge at the top of the front and back parts of the case.
xi) A strap being attached to the two eyelets and running between them.
|Feature in [CRD] which is novel over design corpus||Present, absent or different in Kiddee Cases|
|1||Two handles at the front shaped like horns.
||Two handles present, but different shapes in the form of insect antennae or erect but folding animal ears.|
|2||Sides have a sculpted ridge and indent below of semi-circular shape.
|3||Front [clasp] is (a) oval in outline shape, not circular and (b) has a plain outer surface.
||Absent. Cover is circular and not plain.|
|4||Rear [clasp] is (a) oval in outline shape, not approximately square and (b) has a plain outer surface.
||Absent. Cover is circular and not plain.|
|5||Strap along the top surface.
||Present, but different shape|
|6||Ridge present along centre of front, top and rear, expanding to form an oval shape along the top and around clasp covers at front and rear.||Present, but different shape|
|7||[Lip] at bottom of front and rear.
|8||Circular tab attached to strap, hanging down rear side.
|9||Wheels have central circular feature from which extend five "spoke" ridges.
||Absent. Wheel sides smooth.|
|10||Overall shape is symmetrical front to rear.
||Absent. Asymmetrical shape. Seat to rear of centre.|
|Principal further features of Kiddee Cases absent from [CRD]
|1||Prominent animal markings.
|2||Eyes at front.
|3||Wheels substantially obscured by side covers.
|4||Two handles present at the top.
||Overall more rounded contours.|
||[Clasps] at front and back have on the outer face (a) a circular feature (b) within which is a cross and (c) a cut-out portion at the side.
The claim for infringement of design rights
"(1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part 'design' means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
(3) Design right does not subsist in—
(a) a method or principle of construction,
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.
(4) A design is not 'original' for the purposes of this part if it is commonplace in the design field at the time of its creation.
"'Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed."
The designs relied on
i) The clamshell case may be of any shape provided it has a saddle-shaped top and a substantially rectangular base.
ii) The general appearance can be of any animal. The horns can be of any size and shape. The nose and tail can be of any size and any shape which be described as "generally rounded … with a cut out to one side.
iv) The ridge can be of any size and shape provided it expands to oval shape in two stated places.
v) The eyelets can be of any size and shape.
vi) The strip may be of any size and shape provided it is approximately level with the top of the ridge.
vii) The hinge can be of any size and shape provided it has the interleaved portions.
viii) The wheels can be of any shape, provided they have the stated proportion of diameter to the length of the case.
The claim for infringement of copyright
Summary of conclusions
i) PMS has infringed the CRD;
ii) PMS has infringed the design right in designs A, B, D and F, but not designs C and E;
iii) PMS has not infringed the copyright in the Trunki artwork;
iv) PMS has infringed the copyright in the Trunki safety notice.
Annex 1: the Rodeo concept board
Annex 2: the CRD, Trunki Mark I and Kiddee Case
Annex 3: Magmatic's Particulars of Designs
"(A) The metal parts of the clasps
Aspect of clasps relied upon
(B) The clasp as a whole
Aspect of clasp relied upon
(1) The design comprising (that is to say consisting of) the combination of the aspects of shape and configuration of the metal clasps identified in paragraph 1 above, and the aspect of shape and configuration consisting of generally rounded locking covers with a cut out to one side and a central rotating portion.
(2) The aspects of the locking covers relied upon are … the following aspects of shape and configuration (the letters refer to the marked up photographs attached at Annex 1 to the [claimant's Part 18] response …):-
An outer portion being shaped like an inverted bowl (A) which has (on the side located away from the hinge) two protruding ribs (B). The inverted bowl has a cut away portion (C) located close to the hinge. The inverted bowl has a circular central locking mechanism.
(3) The claimant does not rely upon the aspects of shape and configuration of the slot in the central locking mechanism to take a key. The claimant does, however, rely upon (a) the existence of a slot in the end of the central locking mechanism and (b) the aspects of shape and configuration of the inside of the circular central locking mechanism facing the case.
(C) The outside of the case
Aspects of outside of case relied upon
(1) The aspects of the external appearance of the Mark I Trunki case identified in paragraph 6 below.
(2) Further, if the defendant contends that the design of the external appearance of the Mark III Trunki case (as set out in paragraph 8 below) is not original over the design referred to as the Mark IIA Trunki …, the claimant will rely upon the aspects of the external appearance of the Mark IIA Trunki case identified in paragraph 7 below.
(3) The aspects of the external appearance of the Mark III Trunki case identified in paragraph 8 below.
External appearance design 1 – Mark I Trunki
(i) a clamshell case, with a saddle shaped top, and a substantially rectangular base with 4 wheels in the corner;
(ii) the case having the general appearance of an animal, with two horns on the upper front portion of the case, and a nose and a tail each comprising a generally rounded plastic locking cover with a cut out to one side;
(iii) [not used]
(iv) a ridge where the two clamshell portions meet, running up the front, along the top and down the back of the case; the ridge expanding to form an oval shape in the portion of the ridge in the centre of the saddle of the case and around the clasp at the front and rear;
(v) two eyelets in the top front and top back of the case;
(vi) a strip located between the two clamshell portions, which protrudes from the case so that it is approximately level with the top of the ridge;
(vii) a hinge comprising multiple interleaved protrusions from each side of the clamshell case;
(viii) the wheels having a diameter which is of a particular proportion to the size of the rest of the case; the proportion being a ratio of 1:5 of wheel diameter to total length of case.
External appearance design 2 – Mark IIA Trunki
(1) the aspects of shape and configuration of that case listed in paragraphs 6(i), 6(ii) and 6(iv) to 6(viii) above, and
(2) the following aspects of the cloth handles on the top of the case, namely
(a) the particular length (about 15 cm);
(b) the handles being folded in half and sewn in their middle third to form a narrower centre portion;
(c) the handles being spaced around the expanded portion of the central ridge in the top of the case;
(d) the handles being mounted in slots cut between the inner and outer portion of the clamshell halves, and terminated with a (metal) C shaped grip folded over the ends;
(The fact that the handles are made of cloth and the grip is made of metal is not relied upon as an aspect of shape or configuration).
External appearance design 3 – Mark III Trunki
(1) the aspects of shape and configuration of that case listed in paragraphs 6(i), 6(ii) and 6(iv) to 6(viii) above;
(2) the aspects of shape and configuration of the cloth handles identified in paragraph 7(2) above; and
(3) the eyelets being flush with the external perimeter of the case, and there being U shaped channels cut into either side of the central ridge about the eyelets.
(D) The inside of the case – straps and pouch
Aspect of inside of case relied upon
(i) the following aspects of the shape and configuration of X shaped retaining straps and their associated fixings and mountings:
(1) they are X shaped retaining straps affixed to the 4 internal corners of the case;
(2) they are sewn at their inner ends around the loop of a clasp (the clasp forming the centre of the X shaped straps);
(3) they are fixed by (inverted) L shaped grips clamping the straps at the top of the case, which are held in place by a screw fastened to the inside top of the case (excluding any aspect of the L shaped grip extending beyond the outer part of the inner wall of the shell);
(4) they are fixed by generally L shaped grips clamping the straps at the bottom of the case which cover the top and run down the side of a wedge shaped portion of the case which fills the lower corners of the case and which are held by a screw into that wedge shaped portion.
(ii) the shape and configuration and position of the pocket made of cloth; the pocket being approximately 38 cm in length and 8cm in depth and attached to where the X-shaped cross-straps are secured to the case; and further including a folded hem, containing a flat elastic cord; elastic cord being flat and running the length of the pocket.
(E) Combinations of designs
Aspects of the Trunki cases relied upon
(1) the design consisting of the combination of the aspects of the clasp referred to under section (B)/paragraph 3 above (the locking clasp) and the aspects of the external appearance of the Mark IIB case as defined in paragraph 7 above;
(2) the design consisting of the combination of the aspects of the clasp referred to under section (B)/paragraph 3 above (the locking clasp) and the aspects of the external appearance of the Mark III case as defined in paragraph 8 above.
(F) The tow strap
Aspect of the tow strap relied upon
(i) A strap with a hook at one end and a key at the other end.
(ii) The hook at one end being attached to the strap by a loop formed in the strap, which is attached to the body of the strap by a buckle; the centre portion of the buckle being attached to the tail of the loop by a loop sewn in the end of the tail.
(iii) The key at the other end being attached to the strap by a loop about 11cm long formed by the strap being folded back on itself, and attached to the strap so as to leave a tail.
(iv) The tail being formed with a further loop to attach a further hook to the strap.
(v) The overall shape and configuration of the two hooks identified in (i) and (iv) above.
(vi) The overall shape and configuration of the body of the key (but not including the configuration of the end of the key).
(vii) The overall shape and configuration of the buckle."