Not idea or invention

Magmatic Ltd v PMS International Group plc (Comptroller General of Patents, Designs and Trade Marks intervening) [2016] UKSC 12; TLR 25 March; SJ 15 and 29 March; NLJ 11 March.


The claimant owned a Community registered design in respect of a children’s ride-on suitcase which was designed to look like an animal with horns. The registered design consisted of six images in monochrome, with distinct tonal contrasts but no surface decoration. Subsequently the claimant made and sold ride-on suitcases the shape of which was very similar to that of the registered design but with different colouring and ornamentation, such as nose and feet markings and spots. The defendant started selling similar products, which looked like animals with ears or insects with antennae and were brightly coloured and decorated with markings, such as eyes, spots and whiskers. The claimant brought proceedings claiming that the defendant had infringed its registered design, on the basis that its suitcases did not “produce on the informed user a different overall impression”, within art10 of Council Regulation (EC) No 6/2002. The judge held that the registered design was for the shape of the suitcase and that, therefore, the graphical designs on the surface of the defendant’s suitcases were to be ignored and he allowed the claim. On the defendant’s appeal, the Court of Appeal concluded that the judge had (i) failed to give proper weight to the overall impression of the registered design as an animal with horns, (ii) failed to take into account the fact that the absence of decoration on the registered design reinforced the horned animal impression and (iii) wrongly ignored the colour contrast in the registered design, and accordingly held that it was free to form its own view on the question of infringement and concluded that the overall impression created by the two designs was very different and that, therefore, the defendant’s product did not infringe the registered design.