Horned animal, insect or tiger with floppy ears? Trunki loses out in the Court of Appeal

This one is about registered community designs (RCDs), and the different overall impression created by one piece of child ride-on luggage and another.

The loser is Dragon’s den reject and great British success story Magmatic, maker of the Trunki. The winner is PMS International and its discount copycat the Kiddee Case. Magmatic won at first instance before Mr Justice Arnold, in a decision found here and reported here. But in Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181, PMS has won its appeal to the Court of Appeal.

RCDs protect any aspect of the appearance of the whole or a part of a product resulting from its lines, contours, colour, shape or texture or the materials of which it is made. The design must be new and have individual character compared to the prior art.

The designs in question

One view of the designs in question is above. On the far left, Magmatic’s original award-winning design called the Rodeo. Next up we have Magmatic’s RCD. Third we have one of the Trunki products as marketed (the Mark I). Finally, we have one of PMS’s Kiddee Case products, which PMS admitted was inspired by the Trunki and intended to be a discount version (the floppy-eared tiger version is shown, there was also a ladybird version which was considered).

The first instance decision

Validity of the RCD was not in issue. However, the Rodeo was cited as prior art as a squeeze: PMS’s argument being that if the RCD produced a different overall impression on the informed user than the Rodeo (which it needed to do if it were to have individual character and so be valid), it must also follow that the Kiddee Case produced a different overall impression to the RCD, and so there could be no infringement (the same test essentially applying on validity and infringement for RCDs).

I will not repeat the judge’s thorough analysis of the various features of each of the Rodeo, RCD and Kiddee case, but this was his conclusion as to the overall impression produced by each (Arnold J uses the abbreviation CRD not RCD):

"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."

So the Kiddee Case infringed the RCD. It is odd for a judge to express that he is “rather more doubtful” of his conclusion as he is reaching it, and perhaps as a result it is unsurprising that PMS appealed.

The decision on appeal

As I have already given away, the Court of Appeal came to a different conclusion. Lady Justice Black and Lord Justice Moses both agreed with Lord Justice Kitchin (the IP judge amongst them), whose conclusion was:

“The impression created by the CRD is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.”

Where the trial judge went wrong

What justified this reassessment of an essentially factual question by the Court of Appeal, given that the very same Court so recently warned appellate courts “not to interfere with findings of fact by trial judges, unless compelled to do so”?

Pets and luggage don't mix

The Court of Appeal found that Arnold J had made several errors of principle in his characterisation of the protection provided to the RCD (which turns on the representation of the design in the registration, as shown above) which he carried through into his comparison of the RCD and the Kiddee Case. The Court of Appeal was in those circumstances free to form its own view of infringement.

The surface ornamentation point

First, Magmatic had argued that as the RCD did not show any graphical designs on the surface of the suitcase, the surface design of the Kiddee Case had to be ignored in the comparison. This was wrong, held the Court of Appeal. The surface design of both was relevant. Considering its shape and because its flanks and front were not adorned with any other imagery, the RCD was “a design for a suitcase which, considered as a whole, looks like a horned animal”, something the judge had failed to appreciate. Further, the surface design of the Kiddee Case “significantly affects how the shape itself strikes the eye” and these differences should have been taken into account.

These differences came together in a sentence rather more at home in a children’s bedtime story than an intellectual property judgment, with Kitchin LJ noting that once the correct comparison was made, one would conclude that: “The stripes on its flanks and the whiskers on either side of its nose immediately convey to the informed user that this is a tiger with ears. It is plainly not a horned animal.”

Who needs a Trunki when you've got a dog? 

On this point, Kitchin LJ relied upon Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339. In finding that Samsung’s Galaxy tablet produced a different overall impression to Apple’s RCD (for an iPad-like tablet), the judge (who was later backed up by Jacob LJ on appeal) considered it a relevant (slight) difference that Samsung’s product was adorned with its trade mark, while a feature of the RCD was that it had no ornamentation (as Apple had argued).

The colour contrast point

Second, although the judge was right to find that the design, registered in monochrome, was not limited to particular colours, the distinct contrasts in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other, were striking features of the design. Not only that, but they were not present in the Kiddee Case (you can see that the tiger has the same colour all over its body).

On this point, Kitchin LJ referred to Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3145 (Ch). In this case, the judge (also later backed up by Jacob LJ on appeal) found that if an RCD does not limit itself to particular colours, colour has to be eliminated from the alleged infringement in comparing the two. However, whilst Kitchin LJ agreed that this authority meant that PMS could not point to the Kiddee Case’s colour as a point of distinction, it did not prevent PMS from relying on the Kiddee Case’s lack of colour contrast.

Something for the Supreme Court and the CJEU?

Isn't it about time we had an IPDog?

Both the surface ornamentation and colour contrast points are interesting points of law as to the scope of protection afforded by an RCD and the interpretation of the drawings or graphics that comprise it. The colour contrast point in particular looks to depart from Procter & Gamble notwithstanding Kitchin LJ’s effort to distinguish it.

Either or both points might very well warrant a further appeal by Magmatic to the UK Supreme Court, followed by a referral to the Court of Justice of the European Union (CJEU). The RCD and the Kiddee Case are clearly very similar products, with the latter intentionally designed to ape the former. Assessing the overall impression is more art than science, and first instance judges might hope (given the recent comments of the Court of Appeal referred to above) that such assessments of fact might be left alone on appeal. To give himself the opportunity to reassess here, Kitchin LJ found a couple of points of law and principle in respect of which he felt the judge had erred. But is it right to switch an overall assessment from one way to the other on the basis of such subtleties as different coloured wheels and the addition of some stripes and whiskers? Merpel’s seen a tiger – so she’s not waiting around to find out!