PMS International Group Plc v Magmatic Limited  UKSC 12
This is the first Community Registered Design case to reach the Supreme Court, and in it the Court has made a landmark decision as to the proper interpretation of Community Registered Designs. In this case, Magmatic, the maker of the Trunki ride-on suitcase for children brought a claim against PMS for infringement of its Community Registered Design against PMS, the seller of the Kiddee Case, which is also a ride-on suitcase for children. In July 2013, Arnold J interpreted the Community Registered Design was for shape of a suitcase alone and held that it had been infringed by the Kiddee Case.
The Court of Appeal allowed PMS’s appeal, holding that the judge had made a number of errors in interpreting the Community Registered Design. Having carried out its own comparison of the respective overall impressions created on the informed user, the Court found that the Kiddee Case did not infringe the Community Registered Design.
Magmatic appealed to the Supreme Court, arguing that the Court of Appeal’s interference with the decision of Arnold J was misplaced and requesting the restoration of the original finding of infringement. In the alternative, Magmatic contended that the case involved points of EU law which should be referred to the CJEU. The request for a reference was supported by the Comptroller General of Patents, Designs and Trademarks who was given permission to intervene.
The Supreme Court dismissed the appeal and declined to make a reference to the CJEU. The Court of Appeal’s reconsideration was justified. In the leading judgment given by Lord Neuberger, the Court held that the overall impression created by the Community Registered Design is that of a horned animal and this was reinforced by the absence of decoration on the surfaces of the suitcase. Moreover, Arnold J had erred in failing to take into account the contrast in tone between its different parts. The Court of Appeal’s finding of infringement therefore stood. In addition whilst expressly stating that its decision on this aspect was obiter the Court expressed the very strong view that absence of decoration may as a matter of principle be a feature of a registered design and that feature may be depicted on a CAD image. Having decided the matter in this way, the Supreme Court considered that the appeal did not raise any issue which should be referred to the CJEU.
Mark Vanhegan QC and Chris Aikens appeared for PMS. Brian Nicholson appeared for the Comptroller General of Patents, Designs and Trademarks.
 UKSC 12