Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

A Community Registered Design of a popular child’s ride-on suitcase was held not to have been infringed by a similar product as, among other things, the Community Registered Design was for an unadorned suitcase shaped like a horned animal while the accused product was softer and more rounded and evoked the impression of an insect with antennae or an animal with floppy ears.

— Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181 (England, Court of Appeal, 28 February 2014)

 
Facts

 
The plaintiff, Magmatic Ltd (“Magmatic”), made and sold a very popular child’s ride-on suitcase under the trade mark “Trunki”. It had obtained a Community Registered Design (“Registered Design”) for the Trunki suitcase. The Registered Design consisted of six monochrome representations of the ride-on suitcase exterior from different angles and perspective. In addition, the wheels represented in the design were of a significant colour contrast from the body of the suitcase. Versions of the Trunki that are sold include designs with animal and insect print.

 
The defendant, PMS International Ltd (“PMS”), imported and sold a similar product under the name of “Kiddee Case”. The Kiddee Case was first sold in two basic versions—an animal version with handles to look like ears and an insect version with handles formed to look like antennae. Each version comes in a number of varieties which have different graphical designs on its surface.

(Click to Enlarge)

Magmatic commenced proceedings against PMS for infringement of its Registered Design, design rights, and literary copyright.

 
Decision

 
The English Court of Appeal noted that before carrying out any comparison of the registered design with an earlier design or with the design of an alleged infringement, it was necessary to ascertain which features were actually protected by the design and so are relevant to the comparison. In this case, with regards to the scope of protection, the Court held as follows:

• The representations of the Registered Design were not simple line drawings. Rather, they consisted of six monochrome computer-generated three-dimensional images which showed the suitcase from different perspectives and angles and showed the effect of light upon its surfaces.
• The suitcase looked like a horned animal with a nose and a tail, and it did so both because of its shape and because its flanks and front were not adorned with any other imagery which counteracted or interfered with the impression the shape created.
• As the Registered Design was monochrome, it meant that the design was not limited to particular colours. However, what was also important was the distinct contrast in colour between the wheels and the strap on the one hand, and the rest of the suitcase, on the other.

 
The Court then noted that the two designs had to be considered globally, with the consideration that the informed user would attach less significance to features which formed part of the design corpus, and greater significance to those features which did not. A global assessment also required the designs to be considered having regard to the way in which the products to which the designs are intended to be applied are used, with some features having greater prominence than others, presumably because they are more visible.

Applying these principles, the Court held that PMS’s Kiddee Case did not infringe Magmatic’s Registered Design:

• The Registered Design was clearly intended to create the impression of a horned animal since the monochrome representations of it were not adorned with any other imagery which counteracted or interfered with the impression that the shape created. On the other hand, looking at the insect version of the Kiddee Case, 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 Registered Design.

• Although there were some similarities between the designs at a general level (such as their animal resemblance and rounded profile at each end), there were some significant differences such as the asymmetric profile and the presence of wheel arches in the Kiddee Case that were absent in the Registered Design.

• The overall impression created by the two designs was very different—the Registered Design created the impression of a horned animal and was sleek and stylised design with a generally symmetrical appearance with a significant cutaway semi-circle below the ridge. In contrast, the Kiddee Case was softer and more rounded and evoked the impression of an insect with antennae or an animal with floppy ears.

 
Our Analysis / Comments

 
In Singapore, protection for Registered Designs is provided for under the Registered Designs Act (“RDA”).

 
With regard to infringement, it remains to be seen if Singapore will find this case persuasive as the EC Regulation on Community Designs is not analogous to the RDA. In addition the test applied by the English courts in establishing infringement is different from the current two-step test applied by the Singapore courts in Hunter Manufacturing Pte Ltd &. Anor v Soundtex Switchgear and Engineering Pte Ltd. This test involved the following:

• First, assessing the essential or the significant features and having regard to such matters as the statement of novelty, relevant prior art and functions, exclusions etc; and
• Second, comparing the registered design with the alleged infringement to assess whether visually, the latter has incorporated all the design features which as a result of the first step are considered essential parts of the registration.

Nevertheless, this case may set a precedent in the UK for monochrome design drawings potentially having a more limited scope of claim compared to simple line drawings. It remains to be seen if such an approach will be considered in Singapore.

For further information, please contact:

Chung Nian Lam, Partner, WongPartnership
[email protected]

Jeffrey Lim, Partner, WongPartnership
[email protected]

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