AIPPI Rapid Response: Has the UK Supreme Court gotten Community design rights all wrong in Trunki?

The AmeriKat peeking out from her suitcase, hoping
the dust on the Trunki decision has settled...

A couple of weeks ago, news of the UK Supreme Court's decision in the Trunki Community registered design battle spread like wildfire across Europe, with many claiming it was the end of innovative design protection.  Ever responsive to the latest IP developments, the UK Group of AIPPI arranged a Rapid Response seminar with the counsel of the losing and winning teams to share their perspective of the most talked-about decision of 2016 (so far).  With the AmeriKat's nose buried under papers, she relied on a helpful paw in the form of Tom Edwards (A&O) to report on yesterday's session hosted at the London offices of Allen & Overy.  Over to Tom:

"Press reports rapidly followed after the Supreme Court handed down its decision in Magmatic Ltd v PMS International Ltd [2016] UKSC 12 a couple of weeks ago (see IPKat post here).  Many press outlets were sympathetic to Magmatic's loss, decrying that the Supreme Court got it wrong.  But did it?  That was the topic for discussion at last night's AIPPI Rapid Response event.

The case concerned a Community registered design (CRD) in the Trunki ride-on animal suitcase.  Magmatic alleged infringement of its CRD by PMS International’s rival Kiddee case. AIPPI's event provided an ideal opportunity to hear the views of those at the heart of the case with the discussion being led by representatives from both sides (speaking in their personal capacity): Michael Hicks and Jonathan Moss, who had represented Magmatic, and Mark Vanhegan QC, who had appeared for PMS International in the Court of Appeal and Supreme Court.  Their slides can be found here.

Some Background

Jonathan Moss kicked off the event with an overview of the case.  Moss reminded the audience of some interesting features of Arnold J’s first instance decision (see here) that could easily be overlooked in light of the subsequent appeals, namely:

• more than just the Trunki CRD was at issue
• Arnold J's judgment provides a clear example of how to apply the test for infringement of unregistered design rights
• in finding the Rodeo design, a predecessor to the Trunki, to be prior art Arnold J set a low threshold for a design to be considered as more than just an obscure disclosure under Article 7(1) (of the Community Designs Regulation). 

As a reminder, the questions for which permission to appeal in relation to infringement of the Trunki CRD was given were as follows:

(i) whether, when making the assessment of the overall impression created by the Kiddee cases, the Court should take into account the graphical designs printed on the surface of such cases (the “surface decoration”) or whether it should only take into account the features of shape of the Kiddee cases; and
(ii) if the surface decoration is to be taken into consideration, whether the Kiddee cases do not produce on the informed user a different overall impression.

The Trunki case

The key cases relevant to these questions were Proctor & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, in which it was held that a registered design based on a line drawing was for the shape alone, and Samsung v Apple [2012] EWCA Civ 1339, in which Apple had contended that lack of ornamentation was a feature of the simple line drawing of a tablet which they had registered as the design. The Court of Appeal (see here) found that Arnold J had erred in the following respects (as interpreted by the Supreme Court):

i) He had not given proper consideration to the overall impression of the Trunki CRD as an animal with horns;
ii) He failed to take into account the effect of the lack of ornamentation to the surface of the CRD as reinforcing the horned animal impression; and
iii) He ignored the colour contrast in the CRD between the body of the suitcase and its wheels.

Magmatic appealed to the Supreme Court which upheld the Court of Appeal’s decision.

No - they were absolutely correct!

Mark Vanhegan QC took the stage to offer his insights. Focusing on high level, public policy arguments he set out a persuasive case for granting a narrow scope of protection to CRDs. In particular he highlighted the strength of CRDs, both in length (25 years) and due to their absolute nature.  The strength of CRDs is amplified when compared to the relative ease with which they can be obtained, via a cheap and quick registration process with no substantive validity assessment prior to grant. The importance of freedom of competition was also emphasised, in light of the fact that design rights are not intended to protect ideas or concepts but specific design articles.

The Kiddee case

Further Vanhegan QC noted that applicants had a wide degree of freedom in choosing how to represent their design. Taking these wider considerations into account, he argued that the Court of Appeal and the Supreme Court had got the test absolutely right in holding that a colour contrast between the wheels and the body of the suitcase should be read as a feature of the Trunki CRD. Further, once it had been acknowledged that this surface feature had intentionally been included, the lack of other surface features on the CRD became significant. As a result the Court of Appeal was correct when assessing infringement to take into account the effect this had on reinforcing the impression of a horned animal, and additionally the influence that the surface features of the Kiddee case had on its design. While an obiter comment, the Supreme Court gave a clear indication that, in its view, lack of ornamentation could be a feature of a design.

Yes - they did get it wrong!

Michael Hicks provided the opposition view, focusing  on the legal test. He submitted that if the question as to whether lack of ornamentation could be a feature of a design was indeed an obiter point, the Supreme Court must have reached its decision of non-infringement based on an analysis of shape alone or shape in combination with the added feature of tonal contrast between the wheels and the body of the suitcase. On the other hand, the Court of Appeal had seen the lack of surface decoration as influencing the overall impression of the design and had taken the surface ornamentation of the Kiddee case into account when assessing infringement.

Try as she might, the AmeriKat cannot
ignore ornamentation...

By assessing infringement in this way, Hicks submitted that the Court of Appeal had in effect taken into account lack of ornamentation as a feature of the Trunki CRD. Despite the difference in approach, the Supreme Court had concluded that the Kiddee Case was sufficiently different from the Trunki CRD as to create a different overall impression, thereby affirming the Court of Appeal’s decision. Hicks challenged the finding that the question as to whether lack of ornamentation could be a feature of a design was not central to the case and, in any event, unarguable.

Paragraph 50 of the judgment was highlighted in which Lord Neuberger first states that there are powerful arguments against the conclusion that lack of ornamentation was a feature of the Trunki CRD and then appears to consider the initial Trunki product and subsequently registered designs as supporting lack of ornamentation being a feature. Hicks suggested that such considerations should not influence the assessment of a registered design.

Practical Steps

Some words of wisdom to potential applicants for CRDs were provided by Vanhegan QC who suggested a three staged approach:

1. Register a full colour photo of the design
2. Register the same image devoid of any colour
3. Register a simple line drawing, devoid of any tonal contrasts.

By registering a design at these varying levels of detail, the rights holder equips himself with a range of options when challenging infringement by competing products. The suggested approach raises the intriguing question as to whether Arnold J’s judgment would still have been overturned had the Trunki CRD been absent of any tonal contrast between the wheels and the body of the suitcase.

The event concluded with questions from the floor, which covered topics ranging from the potential difficulties of registering only part of a design, to the factors the Court will take into account when interpreting a design. The discussion highlighted the uncertainties facing rights holders due to the lack of clear guidance as to how images, both as a whole and particular features, will be interpreted by the courts. In addition the narrow scope of protection ascribed to the Trunki CRD strongly implies that protection against anything other than direct copies of a product is far from guaranteed."