The ruling in Magmatic v. PMS International Ltd over registered deign infringement of the Trunki highlights the importance of filing the right images in a registered design application.

In his judgement of 11 July 2013, the High Court ruled that PMS had infringed Community Registered  Design  (CRD) No. 43427-0001.

The table below shows the images of the registered design in the left hand column and the infringing suitcases in the middle and right hand columns:

 

PMS appealed the ruling and in February 2014 the Court of Appeal reversed the High Court decision.

Part of the reason that the PMS were successful was the type of images that Magmatic had used for the design registration.

As can be seen above, Magmatic used computer rendered monochrome images instead of black and white line drawings.

This meant that instead of simply comparing the shapes of the cases the judge considered the colour contrast and effect of light on its surfaces. As set out in the judgement:

I believe that in interpreting the CRD as he did the judge fell into error in two respects. The CRD consists of six monochrome representations of a suitcase. These representations are not simple line drawings, however. Rather, they are computer generated three-dimensional images which show the suitcase from different perspectives and angles and show the effect of light upon its surfaces

…

The second error concerns the colour contrast between the wheels and the body of the CRD. This is, as I have said, a fairly striking feature of the CRD and it is simply not present in the accused designs. In my view it was another matter which the judge ought to have taken into account in carrying out the global comparison.

This judgment thereby highlights the importance of filing images that indicate the aspect of a design that you wish to protect.

Although other factors relating to the designs were considered important by the judge in reaching his decision, had simple black and white line drawings been registered then it is quite possible that PMS would not have been successful on appeal.

As neatly summarized in the ‘Air Wick’ ruling:

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.

Design applicants might therefore also consider filing more than one set of drawings each showing:

1. Different aspects of a design; and/or

2. The same design at different levels of generality.

Such drawings may be filed in the same application for relatively little additional cost.

Thus in the same way that we structure patent claims to provide as broad protection as possible in claim 1 and slightly narrower protection in each dependent claim it may be worth filing a bald black and white line drawing for broad design protection and subsequent sets of more detailed drawings until eventually a life-like representation is reached.

The full judgment may be read here.

If you have any questions about the meaning of the judgment or registered designs in general please do not hesitate to contact us.