As promised, here's a note on the ruling of the Court of Appeal for England and Wales in Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181, which was decided last Friday. In short, the court held, reversing the decision of the trial judge, that the defendant's ride-on suitcase for children known as the "Kiddee Case" did not infringe the claimant's Community registered design (CRD) for another ride-on suitcase known as the "Trunki". Said the court, while there were similarities between the two cases, the overall impression they produced on the informed user, taking into account their shape and markings, was very different. 

The claimant's CRD consisted of six monochrome representations of a suitcase. These representations were computer-generated, three-dimensional images which showed the case from different angles. The ride-on case looked like a horned animal with a nose and a tail, gaining this appearance because of its shape and because it was not adorned with any imagery to counteract the impression created by its shape. As a case, it was sleek and stylised, and the CRD conveyed a distinct visual image.

According to the court,

* The trial judge failed to appreciate that the CRD was for a case which, considered as a whole, looked like a horned animal. Since the representations were monochrome, the design was not limited to particular colours.

* As to the application of the facts to the law, the court held that, though the trial judge had not erred in his consideration of the principles relevant to the comparison of the CRD with the Kiddee Case, he had erred in the way he had applied those principles. His error as to the proper characterisation of the CRD carried through into the comparison he carried out and he did not carry out a global consideration having regard to the fact that the CRD was clearly intended to create the impression of a horned animal -- one of the CRD's essential features.  So far as that impression was affected by features appearing on the cases, those features had to be taken into account.

* One version of the Kiddee Case was decorated so as to resemble a ladybird. The ladybird impression created by its shape was influenced by the two-tone colouring of its body and the spots on its flanks. Overall, the shape conveyed a completely different impression from that created by the CRD. The judge had thus been wrong to eliminate the Kiddee Case's decoration from his consideration.

* Precisely the same considerations applied to the animal version of the Kiddee Case, where the stripes on its flanks and the whiskers beside its nose conveyed the impression of a tiger. It was plainly not a horned animal.

* The trial judge had also erred in not taking account of the colour contrast between the wheels and the body of the case in the CRD.

* The trial judge having erred, the court was free to form its own view of whether the Kiddee Case infringed the CRD. In its view there were many significant differences and there was no infringement.