High Court considers obscure disclosures and existing design corpus in Trunki case
Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat)
In a recent infringement action [1] brought by Magmatic Limited, the Patents Court found that Magmatic’s Community Registered Design for their well-known ‘Trunki’ children’s suitcase was infringed by a similar ride-on ‘Kiddee Case’ imported into the UK by PMS International Limited (PMS). The decision provides useful guidance as to how the ‘obscure disclosures’ exception of the Community Designs Regulation should be interpreted.
Facts
The Trunki case has its origins in a children’s ride-on suitcase called ‘Rodeo’, which was submitted by the Magmatic’s founder, Mr Law, to a national design competition. The design won the competition and was shown at a public ceremony in 1999 at which Mr Law received his award. Mr Law subsequently went on to develop the Trunki suitcase from the Rodeo design.
In contrast, PMS International started out in 2010 with the intention of developing a similar product to Trunki at lower cost. Throughout the development of the Kiddee Case, its artists and contract designers had access to a Trunki case.
Decision
Magmatic claimed that PMS infringed several intellectual property rights held by Magmatic in relation to their Trunki ride-on suitcase, including a Community Registered Design (CRD) for the appearance of the Trunki suitcase. PMS did not dispute that its product was inspired by the design of the claimant’s Trunki case but contested that its Kiddee Case infringed Magmatic’s CRD and challenged the validity of the CRD.
Validity
In assessing the validity of the Community Registered Design, the court considered whether the design was novel and had individual character in light of the Rodeo design. Magmatic argued that the Rodeo design had not been made available to the public at the award ceremony in 1999 because that event “could not have reasonably become known in the normal course of business to the circles specialised in the sector concerned”. This is the ‘obscure disclosure’ exception of Article 7 of the Community Designs Regulation [2].
Reviewing the case law relating to the obscure disclosure exception, the court held that the words “circles specialised in the sector concerned” in Article 7 of the Community Designs Regulation (CDR) are to be broadly interpreted to include all individuals who conducted trade in the sector concerned, which in the present case was the luggage trade. Although the design competition won by Mr Law was for plastics design, the theme of the competition in the year Mr Law entered was luggage, and it was not therefore unreasonable for suitcase specialists to have seen the Rodeo design. Furthermore, it was the judgement of the court that the burden of proving that the exception applies rests on the party relying on the exception. This burden had not been discharged by Magmatic.
Despite the Rodeo design not falling under the obscure disclosure exception, the court nevertheless found that the Rodeo design did not form part of the existing design corpus that would be known to the informed user. It was common ground between the parties that the informed user in the present case is a 3-6 year old child or their parent, carer or relative. The court therefore concluded that although the Rodeo design had been made available to the public in the sense that (objectively) it would have been available to the circles specialised in the sector concerned, the awards ceremony at which the Rodeo design was disclosed was too obscure to have been known to the informed user. As a consequence, and in line with Recital 14 of the CDR, the Rodeo design was not to be taken into account when assessing the overall impression produced on the informed user.
Both the individual character and the scope of protection of a CRD depend on the overall impression produced on the informed user and hence are considered with respect to the existing design corpus. In the present case, the existing design
corpus was held to be adult clamshell suitcases, from which the court considered the Trunki design to represent a considerable departure. Consequently, the court held that the CRD possessed both individual character over the existing design corpus and a broad scope of protection. Since it was self-evident that the CRD was not identical to the Rodeo design (novelty being assessed with respect to the entirety of the earlier designs available under Article 7), the CRD was both novel and had individual character over the prior art.
Infringement
The court then went on to consider whether the Kiddee Case infringed the CRD and, referring to Procter & Gamble [3], noted that the CRD enjoyed a broad scope of protection because the Trunki design was the first of its kind known to the informed user and its designer would have had considerable design freedom in developing the design. In comparing the Kiddee Case to the CRD, the court further noted that the CRD was directed only to the shape of a ride-on suitcase and any differences in graphical artwork between the Kiddee Case and the CRD were therefore to be ignored. Reviewing the overall impressions on the informed user produced by the shapes of the Kidee Case and the CRD, the court judged the two designs to produce the same overall impression and therefore held that PMS had infringed Magmatic’s CRD.
Comment
This case offers useful guidance on the ‘obscure disclosures’ exception of Article 7 CDR and is illustrative of the potentially limited existing design corpus known to the informed user compared to the prior art available to the public under Article 7. In considering the obscure disclosure exception, the court held that the words “circles specialised in the sector concerned” in Article 7 of the Community Designs Regulation (CDR) are to be broadly interpreted to include all individuals who conducted trade in the sector concerned. In the present case, this led to the conclusion that a little-known disclosure was available in the circles of suitcase specialists and it was not therefore ‘obscure’. However, it does not necessarily follow that such a disclosure would form part of the existing design corpus of the informed user.
[1] http://www.bailii.org/ew/cases/EWHC/Patents/2013/1925.html
[2] http://oami.europa.eu/ows/rw/resource/documents/RCD/regulations/62002_en_cv.pdf
[3] http://www.bailii.org/ew/cases/EWCA/Civ/2007/936.html
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