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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Magmatic Ltd v PMS International Group Plc  EWCA Civ 181 (28 February 2014)
Cite as:  EWCA Civ 181,  RPC 24,  ECDR 20
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Arnold
Strand, London, WC2A 2LL
B e f o r e :
LADY JUSTICE BLACK
LORD JUSTICE KITCHIN
| Magmatic Ltd
|- and -
|PMS International Group Plc
for the Claimant/Respondent
Mark Vanhegan QC and Chris Aikens (instructed by Gordons Partnership LLP)
for the Defendant/Appellant
Hearing date: 21 January 2014
Crown Copyright ©
Lord Justice Kitchin:
i) substantially rectangular bases;
ii) clasps on the front and rear;
iii) four wheels, one on each corner;
iv) a ridge where the clamshell portions meet, such ridge running along the front, top and rear side of the case;
v) 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; and
vi) eyelets at the top front and top back of the case.
"64. In my judgment the informed user would notice both similarities and differences between the CRD and the Rodeo when comparing them in detail. What matters is how those similarities and differences would affect the informed user's overall impression. The Rodeo is rather squat and chunky, and the handle forms an important part of its appearance. Despite the novelty of the concept, the appearance of the Rodeo is somewhat crude and old-fashioned. By comparison, the CRD is slimmer and more sculpted, and the ridge and the horns form important parts of its appearance. The CRD appears to be considerably more sophisticated and modern than the Rodeo. Furthermore, the clasps have a rather different visual impact, looking much more like the nose and tail of an animal than the winder and the rear clasp on the Rodeo. Thus the overall impression created by the CRD is different to that created by the Rodeo. Accordingly, I consider that PMS was right not to challenge the validity of the CRD except as part of its squeeze argument. "
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.|
"I agree that these differences are present, but in my view a number of them are not as visually significant as this table suggests. Thus the handles (item 1) are different in detail (more so in the case of their antennae than in the case of the ears), but the overall effect of their shape and positioning is similar; the clasp covers (items 3 and 4) are broadly similar despite the detailed differences; the strap is very similar (as is the method and positioning of its attachment); the ridge is very similar apart from the flared sections around the clasps; the absence of the tab (luggage label) would not strike the informed user as significant for the reason given above; and the asymmetry of the Kiddee Case is not particularly noticeable. In the case of the wheels, the real difference is that the wheels on the Kiddee Case have covers over them. Furthermore, the central feature and spokes are barely visible on the CRD. "
|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.
"In my judgment the informed user would notice both similarities and differences between the CRD and the Kiddee Case when comparing them in detail. What matters is how those similarities and differences would affect the informed user's overall impression. In my view the most noticeable differences between the Kiddee Case and the CRD are (i) the more rounded contours of the Kiddee Case around the seating area compared to the more angular contours and semi-circular indentation of the CRD in that area and (ii) the covered wheels of the Kiddee Case. Also noticeable are (iii) the more flared areas of the ridge around the clasps and (iv) the absence of the lip. Nevertheless, there is an overall resemblance between the designs."
"If it were not for the Rodeo, I would have little hesitation in saying that the Kiddee Case produced the same overall impression on the informed user having regard to the broad scope of protection to which the CRD would otherwise be entitled. I am rather more doubtful as to whether it can be said the overall impression produced by the Kiddee Case is the same as the CRD and yet the overall impression produced by the Rodeo is different. Nevertheless, I have come to the conclusion that that is the correct assessment. Despite the differences between the Kiddee Case and the CRD, the overall impression the Kiddee Case creates shares the slimmer, sculpted, sophisticated, modern appearance, prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the CRD, but which are absent from the Rodeo. Moreover, neither the Kiddee Case nor the CRD have anything like the handle which is a prominent feature of the Rodeo."
"27. If a design passes these two tests, it is registered as a Community design. The form of the registration derives from the representation included in the application under Article 36. The definition of "design" is that it is the appearance of the whole or part of a product. Whether it is the whole of the product or only part of the product depends, in my judgment, on what is depicted in the application for registration. In the case of a monochrome line drawing, what is protected is likely to be the shape or contours of the product. Although the definition extends to colours and materials, if they are not depicted, they will not be protected. By the same token, if the registered design depicts only part of a product, it is only that part that will be protected. It must be noted that although the applicant is required to identify the products to which his design will be applied, the scope of the protection in that respect is not limited by that: Article 36.6. This means, as both Mr Carr QC and Mr Wyand QC agreed, that if a design is registered for, say, an aerosol, it could be infringed by, say, a vase."
"48. …. The registration must, in my judgment, be the yardstick by which infringement is to be judged. The registration holder is entitled to choose the level of generality at which his design is to be considered. If he chooses too general a level, his design may be invalidated by prior art. If he chooses too specific a level he may not be protected against similar designs. But in my judgment to allow features that are not the subject-matter of the registration to play a part in the assessment of the overall impression would unduly restrict the scope of protection. This conclusion is, to some extent, supported by Russell-Clarke & Howe on Industrial Designs (7th ed) para 2-20 in which the editor/author says:
"Under the new EC harmonised law, there seems no reason why the design of the chair back cannot be registered by itself. In practice, this would be achieved by filing a representation which portrays only the chair back and does not portray the rest of the chair. This would mean that when it came to infringement, only the back of the defendant's chair would be compared with the registration and it would be irrelevant how different or similar, for example, the legs of the defendant's chair are to the design of the proprietor's own products on the market."
49. There is nothing in the registered Community design in the present case that limits the colours. It seems to me therefore, that if one does not eliminate colour from the alleged infringement, the practical effect of not claiming a colour would be to limit the scope of protection to the colour white. But that would defeat the purpose of not claiming a colour (or it might lead applications for registration of a particularly distinctive shape to claim all conceivable colours)."
"71. Mr Carr asked me to record what my conclusion would have been if I had been of the view that the colours and graphics of the Air Wick canister had to be taken into account in making the comparison.
72. The predominant colour of the Air Wick canister is white. If I compare the Air Wick product with the Febreze product, the differences are not enlarged by the use of colour. Both have a predominantly white container, and both have a bluish pastel top. But that is not the comparison that Mr Carr says I should make. He wants to compare the coloured Air Wick product with the colourless registered design.
73. The contrast (some might say clash) between the blue pastel top and the green band immediately below the junction between the top and the canister in the Air Wick product does accentuate the difference between the two parts of the aerosol. It leads to Mr Treeby's conclusion that the Air Wick design is a standard canister with a new top stuck on top. However, it still seems to me that the overall impression is formed by the distinctive shape of the registered design and the Air Wick product. I would not have come to a different conclusion if I had made the artificial comparison that Mr Carr urges."
"40. Before going on to consider this argument in detail, I should record that Mr Carr, under a little pressure from the Court, abandoned his point about decoration, rejected by the Judge at [71-73]. 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."
"15. The second criticism was based on the fact that the Judge took account of the fact that the Samsung products had the trade mark Samsung on both their fronts and backs. It was submitted that the informed user would disregard the trade mark altogether as being a mere conventional addition to the design of the accused product.
16. Actually what the Judge said about the trade mark being on the front of the Samsung tablets was said in the context that Apple was contending that a feature of the registered design was "A flat transparent surface without any ornamentation covering the front face of the device up to the rim." He said:
 All three tablets are the same as far as feature (ii) is concerned. The front of each Samsung tablet has a tiny speaker grille and a tiny camera hole near the top edge and the name Samsung along the bottom edge.
 The very low degree of ornamentation is notable. However a difference is the clearly visible camera hole, speaker grille and the name Samsung on the front face. Apple submitted that the presence of branding was irrelevant …. However in the case before me, the unornamented nature of the front face is a significant aspect of the Apple design. The Samsung design is not unornamented. It is like the LG Flatron. I find that the presence of writing on the front of the tablet is a feature which the informed user will notice (as well as the grille and camera hole). The fact that the writing happens to be a trade mark is irrelevant. It is ornamentation of some sort. The extent to which the writing gives the tablet an orientation is addressed below.
 The Samsung tablets look very close to the Apple design as far as this feature is concerned but they are not absolutely identical as a result of a small degree of ornamentation.
17. So what the Judge was considering was the fact that unlike the design, the front face had some sort of ornamentation which happened to be a trade mark (plus speaker grill and camera hole). Little turned on it in his view, he called it "a small degree of ornamentation." But it was a difference.
18. I think the Judge was correct here. If an important feature of a design is no ornamentation, as Apple contended and was undisputed, the Judge was right to say that a departure from no ornamentation would be taken into account by the informed user. Where you put a trade mark can influence the aesthetics of a design, particularly one whose virtue in part rests on simplicity and lack of ornamentation. The Judge was right to say that an informed user would give it appropriate weight - which in the overall assessment was slight. If the only difference between the registered design and the Samsung products was the presence of the trade mark, then things would have been different.
19. Much the same goes for the Samsung trade mark on the back of the products. Apple had contended that a key feature was "a design of extreme simplicity without features which specify orientation." Given that contention the Judge can hardly have held that an informed user would completely disregard the trade marks both front and back which reduce simplicity a bit and do indicate orientation."
" 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 v Grupo Promer (C-281/10P)  FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM  ECDR 7 (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM, case T-153/08, judgment of 22 June 2010.
 Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:
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; Shenzen paragraph 46).
However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
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);
He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
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).
 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)."
"The most important things in a case about registered designs are:
i) The registered design;
ii) The accused object;
iii) The prior art.
And the most important thing about each of these is what they look like."