Developing a FilingStrategy for Industrial Designs
In November of 2013 we discussed a trial decision in an industrial design case that dealt with a novel yet important issue of law. Since that time, the case has gone all theway to the United Kingdom Supreme Court, the United Kingdom’s highest court, on another issue of practical importance.
The Facts
Magmatic Ltd. is the owner of an industrial design registration relating to a ride-onsuitcase for children represented by six images. The images were prepared by a 3D Computer Assisted Design (CAD) program in monochrome, with grey-scale shading and distinct tonal contrasts. Two of the images from the judgement are reproduced below:
The court said it was clear from the images that the wheels and spokes, the strap on the top and the strips in the front and the rear were shaded black.
Magmatic commenced proceedings seeking damages and a injunction against PMS International Group PLC (“PMS”) alleging that PMS was importing and selling a “Kiddee Case” which infringed Magmatic’s industrial design. Two examples of the Kiddee Case are reproduced below:
The action proceeded to trial. The trial judge emphasized the shape of Magmatic’s suitcase and compared it with the shape of the Kiddee Case. The judge concluded that despite the differences between the design and Kiddee Case, the overall impression of the Kiddee Case shared the slimmer, sculpted, sophisticated, modern appearance, prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal that were present in Magmatic design. As a result the action was allowed.
The Court of Appeal
PMS appealed from this decision to the Court of Appeal. The court had three criticisms of the trialdecision. First, it was said that thetrial judge failed to give proper weight to the overall impression of the Magmatic design. The design relates to an animal with horns which were significantly different from the impression created by the Kiddee Case which was either an insect with antennae or an animal withears. Second, the judge failed to take into account the effect of lack of ornamentation on the surface of the design which was different from the Kiddee Case. Finally, the trial judge ignored the colour contrast in the design between the body and the wheels.
The Court of Appeal concluded that the overall impression created by the two designs was very different and therefore that no infringement had incurred. As a result, the Court of Appeal allowed the appeal.
The UK Supreme Court
Magmatic appealed to the UK Supreme Court. The Supreme Court agreed with the criticisms that had been raised by the court ofappeal. First, they agreed that the overall impression created by the design was that of a horned animal and further agreed that the judge seemed to have failed to consider it.
Second, despite arguments to the contrary, the court said it was plain that the absenceof decoration could, as a matter of principle, be a feature of a registered design. Simplicity or minimalism cannotoriously be an aspect of a design.
Finally, the court agreed, that the colour contrast of the design and the alleged infringing articles represented a potentially significant difference as the wheels and handles (i.e., horns) on the design stood out as features, whereason the Kiddee Case the wheels were largely covered and the handles were the same colour as the body.
The court made some important comments about the preparation and filing of applications for designs. They said it was up to the applicant as to what features they include in an application for a design. The application can be based on all or any of “the lines, contours, colours, shape, texture …materials … and/or … ornamentation” of “the product” in question.
An applicant can file a large number of different applications. The applicant chooses the level of generality at which the design is to be considered. But, if the applicant chooses too general a level, the design may be invalidated by prior art. If the applicant chooses too specific a level they may not be protected against similar designs. These matters must be taken into consideration when the applicant develops its filing strategy.
When it comes to deciding the extent of protection afforded by a particular design, the question must ultimately depend on the proper interpretation of the registration in issue, and in particular ofthe images included in that registration. It is not the task of the court to advise the applicant how it is to bedone. That is a matter of practice rather than law.
Comment
The Magmatic case is a “hard” case because the evidence was clear that the defendant set out to copy the plaintiff’s design. It appears that the defendant was successful in developing a product that shared some key similarities but nonetheless did not infringe the design registration. The court’s advice about filing applications for designs is accurate and helpful but in the specifics of this case perhaps made with benefit of hindsight.
John McKeown
Goldman SloanNash & Haber LLP
480University Avenue, Suite 1600
Toronto,Ontario M5G 1V2
Direct Line:(416) 597-3371
Fax: (416)597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
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