Hilary
Term
[2016] UKSC 12
On appeal from: [2014] EWCA Civ 181
JUDGMENT
PMS International Group Plc (Respondent) v
Magmatic Limited (Appellant)
before
Lord Neuberger, President
Lord Sumption
Lord Carnwath
Lord Hughes
Lord Hodge
JUDGMENT GIVEN ON
9 March 2016
Heard on 3 November 2015
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Appellant
Michael Hicks
Jonathan Moss
(Instructed by
Briffa)
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Respondent
Mark Vanhegan QC
Chris Aikens
(Instructed by
Gordons Partnership LLP)
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Intervener
(Comptroller General of Patents, Designs and Trademarks)
Brian Nicholson
(Instructed by The
Government Legal Department)
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LORD NEUBERGER: (with whom
Lord Sumption, Lord Carnwath, Lord Hughes and Lord Hodge agree)
1.
This appeal concerns an
alleged infringement of Community Registered Design No 43427-0001 (the CRD),
which is owned by the appellant, Magmatic Ltd. The CRD consists of six images
prepared by a 3D Computer Assisted Design (CAD) program, in monochrome, with
grey-scale shading and distinct tonal contrasts. These are two of those images:
.gif)
Although it might appear from these images that the
horns, and possibly the front and rear clasps, are differently shaded from the
body, it is clear from the six images, viewed collectively, that they are the
same light grey shade as the rest of the body, whereas the wheels and spokes,
the strap on the top and the strips in the front and the rear are shaded black.
2.
Magmatic’s founder, Robert Law, won a prize in 1998 for a design of a
ride-on suitcase for children. It had four wheels and a handle, and was known
as the “Rodeo”. He updated the design, which he then applied to register at the
Office for Harmonization in the Internal Market (OHIM), who published it on 28
October 2003 as the CRD, with the express indication that the product depicted
in the six images is for use as “suitcases”.
3.
Since May 2004, Magmatic has (initially through a licensee and since
2006 by itself) manufactured and sold ride-on suitcases for children under the
trade mark “Trunki”, whose shape is very similar indeed to that shown on the
CRD. The Trunki case was initially marketed with the body and strap one colour,
the horns and wheels another colour, and the strips, clasps and wheel-spokes a
third colour, but without ornamentation. Subsequent models had slightly
different colouring and included ornamentation. Two examples of such subsequent
models, which are based on images which are contained in Community Registered
Designs, applied for in 2010 by Magmatic, are shown below. The images included
in these later registrations included both coloured CADs with markings and
drawings with markings. Two of those registered designs included CADs shown
below:
.gif)
The first example has a red body, with black horns, nose,
spots, bottom front, strip, handles, and wheels, and a white centre to the nose
and white spokes. The second example is coloured orange, with horns, front
feet, nose and wheels which are white, but with black markings, nose centre,
spokes, handles and strip.
4.
In February 2013, Magmatic
issued proceedings seeking damages and an injunction against the respondent,
PMS International Group plc, alleging that PMS was importing into, and selling
in, the United Kingdom and Germany a “Kiddee Case” which infringed the CRD.
These are two examples of a Kiddee Case:
.gif)
5.
It will be noted that in each example, the Kiddee Case is a suitcase
with a number of features similar to the CRD; for instance, it is designed to
look like an animal, with a wheel at each of its four bottom corners, and has a
clasp at the front, and a saddle-shaped top so that it can be ridden on. On the
other hand, it has differences from the CRD, such as being brightly coloured
(in the first example it has two main colours, namely, red and black, and in
the second example it is orange), and with eyes in the front, and (in the first
example) a group of large spots or circles towards the rear and (in the second
example) stripes and whiskers, and having an unsculptured ridge and covered
wheels. There are some aspects of the Kiddee Case which can be said to cut both
ways in terms of similarity with the CRD: for instance it has two protuberances
at the front, but they are antennae or ears rather than horns, and, while it
has a ridge along the front, centre and rear, the ridge has a different shape
from that of the CRD.
Community Design Right
6.
Community Design Right is governed by Council Regulation (EC) No 6/2002
(“the Principal Regulation”). Recital (14) of the Regulation mentions that “a
design has individual character” if “the overall impression produced on an
informed user viewing the design clearly differs from that produced on him by
the existing design corpus, taking into consideration the nature of the product
to which the design is applied ….” Recital (24) states that it is “a
fundamental objective” that the procedure for registering a design “should present
the minimum cost and difficulty to applicants”.
7.
Article 4(1) of the Principal Regulation explains that a design “shall
be protected … to the extent that it is new and has individual character”. The
word “design” is defined in article 3(a) as “the appearance of the whole or a part
of a product resulting from the features of, in particular, the lines,
contours, colours, shape, texture and/or materials of the product itself and/or
its ornamentation”. Article 6 explains that a design has individual character
“if the overall impression it produces on the informed user differs from the
overall impression produced on such a user by any design which has been made
available to the public.” Article 10(1) states that “[t]he scope of the protection
… shall include any design which does not produce on the informed user a
different overall impression.” Article 10(2) states that, when “assessing the
scope of protection”, “the degree of freedom of the designer in developing his
design” is to be “taken into consideration”.
8.
Article 36(1) of the Principal Regulation sets out the requirements of a
valid application for registration of a design, which include “a representation
of the design suitable for reproduction”. Article 36(2) also requires an
application to “contain an indication of the products in which the design is
intended to be incorporated or to which it is intended to be applied”. Article
36(3) states that an application “may contain” various things, including “(d)
the classification of the products in which the design is intended to be
incorporated or to which it is intended to be applied”. Article 36(6) states
that “[t]he information contained in the elements mentioned in paragraph 2 and in
paragraph 3(a) and (d) shall not affect the scope of protection of the design”.
9.
Commission Regulation (EC) No 2245/2002 (“the Implementing Regulation”)
implements the Principal Regulation. Article 4(1) of the Implementing
Regulation states that the “representation of the design shall consist in a
graphic or photographic reproduction of the design, either in black and white
or in colour”. Up to seven different views of the design are permitted.
Reflecting article 36 of the Principal Regulation, article 4(1)(c) of the
Implementing Regulation states that “no explanatory text, wording or symbols,
other than the indication ‘top’ … may be displayed”. And article 4(1)(e)
provides that the images accompanying an application to register a design
“shall be of a quality permitting all the details of the matter for which protection
is sought to be clearly distinguished … for entry in the Register of Community
Designs”.
10.
As Jacob LJ said in Procter & Gamble Co v Reckitt Benckiser (UK)
Ltd [2008] FSR 8, para 3:
“The most important things in a
case about registered designs are:
(1) the registered design;
(2) the accused object; and
(3) the prior art.
And the most important thing about
each of these is what they look like.”
And at para 27, he said that “[t]he point of protecting a
design is to protect that design as a design. So what matters is the
overall impression created by it: will the user buy it, consider it or
appreciate it for its individual design?”
The proceedings: first instance
11.
Magmatic alleged that the Kiddee Case infringed the CRD on the ground
that the Kiddee Case did not “produce on the informed user a different overall
impression” from the CRD within article 10(1) of the Principal Regulation.
Magmatic also contended that the Kiddee Case infringed certain other IP rights
of Magmatic, including United Kingdom unregistered design rights and copyright.
PMS’s defence included a classic “squeeze”, namely the contention that, if,
which it denied, the CRD covered the Kiddee Case then it also must extend to
the Rodeo, and therefore it was invalid as it did not have “individual
character” because it did not produce a “different overall impression” from the
existing “design corpus” within article 4(1) of the Principal Regulation. The
matter came on for hearing before Arnold J, and after a trial which lasted four
days, he gave a reserved judgment, in which he found that the CRD was not
invalid over the Rodeo, but that the Kiddee Case infringed the CRD and the UK unregistered
design rights, but not the copyright - [2013] EWHC 1925 (Pat).
12.
After setting out the facts, Arnold J made a number of initial findings
before turning to the crucial issue of whether the Kiddee Case “produce[s] on
the informed user a different overall impression” from the CRD.
13.
At para 52, he rightly said that “the most important thing about each of
(i) the registered design [the CRD], (ii) the accused design [the Kiddee Case]
and (iii) the prior art [the Rodeo] is what they look like”. At para 55, he
identified “the informed user” primarily as the parent, carer or relative of a
three to six-year-old child. And at para 56, Arnold J mentioned that the only
item of prior art relied on by PMS was the Rodeo which had been publicly
disclosed in 1998. However, that disclosure was, he said, on too limited a
basis to be part of the design corpus, which, he held in para 57, was limited
to “a range of adult clamshell suitcases”. He went on at para 61 to say that,
as the CRD “represents a substantial departure from the design corpus and that
the designer of the CRD had considerable design freedom, it follows that, subject
to the impact of the Rodeo, the CRD is entitled to a broad scope of … protection”.
Having compared the CRD with the Rodeo, Arnold J said that “PMS was right not
to challenge the validity of the CRD except as part of its squeeze argument”
(para 64).
14.
In paras 66-69 of his judgment, Arnold J addressed the question whether,
when comparing the Kiddee Case with the CRD, “the graphical designs on the
surface of the Kiddee Case are to be ignored” and concluded that they were,
because, as he put it in para 69, the “CRD is evidently for the shape of the
suitcase, and the proper comparison is with the shape of the Kiddee Case”. In
paras 70-75, he then identified and discussed the detailed similarities and
differences between the CRD and the Kiddee Case. In particular, he identified 11
items of similarity including “[t]wo horns/protrusions located at the top of
the front of the case”, and six features of the Kiddee Case which were absent
from the CRD, although he said that two of the six, namely “[p]rominent animal
markings” and “[e]yes at front” were to be ignored, as the registration in this
case “was for a shape”, as he had explained in para 69. At para 76, Arnold J
said that “the informed user would notice both similarities and differences”,
but that what mattered was “how those similarities and differences would affect
the informed user’s overall impression”, and identified the differences as
being “(i) the more rounded contours of the Kiddee Case around the seating area
…, (ii) the covered wheels of the Kiddee Case, … (iii) the more flared areas … around
the clasps and (iv) the absence of [a] lip [at the bottom of front and rear]”
in the Kiddee Case.
15.
At para 77, having said that, were it not for the Rodeo, he would have
had “little hesitation” in holding that the Kiddee Case “produced the same
overall impression” as the CRD, Arnold J described himself as “rather more
doubtful”, given that the scope of protection to be afforded to the CRD was
reduced by the prior art of the Rodeo. Nonetheless, he concluded that:
“Despite the differences between
the Kiddee Case and the CRD, the overall impression the Kiddee Case creates
shares the slimmer, sculpted, sophisticated, modern appearance, prominent ridge
and horn-like handles and clasps looking like the nose and tail of an animal
which are present in the CRD, but which are absent from the Rodeo. Moreover,
neither the Kiddee Case nor the CRD have anything like the handle which is a
prominent feature of the Rodeo.”
The proceedings: the Court of Appeal
16.
PMS appealed to the Court of Appeal solely on the issue of whether the
Kiddee Case infringed the CRD. For reasons given by Kitchin LJ, with which
Moses and Black LJJ agreed, the appeal was allowed - [2014] RPC 24. Kitchin LJ
considered that Arnold J had erred in two respects, and he gave his reasons in
paras 47-48. Because Kitchin LJ’s reasoning in those two paragraphs is
particularly reliant on what he had said in paras 41-42, it is appropriate to
quote from all four paragraphs.
17.
In para 41, Kitchin LJ began by saying that he thought that the judge
had made two errors; he then explained that the CRD images were not “simple
line drawings”, but “three dimensional images which … show the effect of light
upon [the suitcase’s] surfaces”. He continued:
“41. … Further and
importantly, the suitcase looks like a horned animal with a nose and a tail,
and it does so both because of its shape and because its flanks and front are
not adorned with any other imagery which counteracts or interferes with the
impression the shape creates. As Mr Vanhegan submits, the CRD is, in that
sense, relatively uncluttered and it conveys a distinct visual message. Here
then the first of the judge’s errors can be seen: he failed to appreciate that
this is a design for a suitcase which, considered as a whole, looks like a
horned animal.”
18.
In para 42, Kitchin LJ accepted that, as the CRD images were “shown in
monochrome”, the design claimed “is not limited to particular colours”, so that
“PMS cannot point to the colour of the Kiddee Case as being a point of
distinction”. He continued:
“42. … That is not the end of
the analysis, however, because each of the representations shows a distinct
contrast in colour between the wheels and the strap, on the one hand, and the
rest of the suitcase, on the other. I have given anxious consideration to
whether this is simply an artefact of the computer generation process or a
visual cue to indicate that the wheels and the strap are each separate
components. However, I do not find either of these alternative explanations
convincing. The clasps are also separately functioning components and they are
not shown in a contrasting colour and it seems to me that the wheels could perfectly
well have been shown and depicted as separate components in the same colour as
the rest of the body. Moreover, depicted as they are and standing as they do at
the four corners of the animal, the wheels are, to my eye, a rather striking aspect
of the design as a whole.”
19.
Kitchin LJ next discussed Arnold J’s analysis, and then at para 47, he
returned to his first criticism, which involved a fuller discussion of what he
had said in para 41, namely:
“47. First and most importantly, it seems to me the judge
failed to carry out a global comparison having regard to the nature of the CRD
and the fact that it is clearly intended to create the impression of a horned
animal. This is plainly one of its essential features. Necessarily, therefore,
a global assessment of the CRD and the accused designs requires a consideration
of the visual impression they each create and in so far as that impression is
affected by the features appearing on their front and sides, it seems to me
those other features must be taken into account. Thus taking the insect version
of the Kiddee Case, I believe that the impression its shape creates is clearly
influenced by the two tone colouring of the body and the spots on its flanks.
As a result it looks like a ladybird and the handles on its forehead look like
antennae. Overall the shape conveys a completely different impression from that
of the CRD. It was, in my judgment, wrong for the judge to eliminate the
decoration on the accused design from his consideration entirely because it
significantly affects how the shape itself strikes the eye, and the overall
impression it gives. At least in the case of this particular registered design,
the global comparison necessarily requires account to be taken of the context
in which the accused shape appears. …”
20.
In para 48 of his judgment, Kitchin LJ identified the “second error”, as
being the judge’s failure to take account of “the colour contrast between the
wheels and the body of the CRD”, which Kitchin LJ had explained in para 42. He
described this contrast as “a fairly striking feature of the CRD” which was
“simply not present in the accused designs”, and which “was another matter
which the judge ought to have taken into account in carrying out the global
comparison.”
21.
Although Kitchin LJ said that he had identified two errors, it is
convenient, in order to understand the arguments on this appeal, to treat him
as raising three criticisms. The first, discussed in para 41 and (more fully)
in para 47, is that Arnold J failed to give proper weight to the overall
impression of the CRD as an animal with horns, which was significantly
different from the impression made by the Kiddee Case, which, in the examples
shown in para 4 above, were either an insect with antennae or an animal with
ears. The second criticism, also considered in para 41 and, again more fully,
in para 47, is that the judge failed to take into account the effect of the
lack of ornamentation on the surface of the CRD. The third criticism, in para
42 and, more summarily in para 48, is that the judge ignored the colour
contrast in the CRD between the body and the wheels.
22.
Given his conclusion that the judge had gone wrong in the respects he
had identified in his paras 47 and 48, Kitchin LJ explained in para 49 that the
Court of Appeal was free to form its own view on the central issue of whether
the Kiddee Case infringed the CRD. He then turned to address that issue, and concluded,
at para 53, that “the overall impression created by the two designs is very
different”, and therefore decided that the Kiddee Case did not infringe the
CRD. Accordingly, PMS’s appeal succeeded.
23.
Magmatic now appeals to this court.
The appellate court’s function
24.
Where it falls to a judge to determine whether an item infringes a Community
Registered Design, the decision to be made is whether the item “produce[s] on
the informed user a different overall impression” from the design. That is an
issue which involves a “type of judgmental conclusion that often has to be
reached in intellectual property cases … [in respect of] which appellate courts
should be slow to interfere with the judgment of the trial judge” - Lucasfilm
Ltd v Ainsworth [2012] 1 AC 208, para 45 (Lord Walker and Lord Collins). To
the same effect, Lord Hoffmann said in Designers Guild Ltd v Russell
Williams (Textiles) Ltd (trading as Washington DC) [2000] 1 WLR 2416, 2423:
“because the decision involves the application of a not altogether precise
legal standard to a combination of features of varying importance, … an
appellate court should not reverse a judge’s decision unless he has erred in
principle.”
25.
Kitchin LJ was therefore right to imply in para 49 of his judgment that
it was only because he had concluded that Arnold J had gone materially wrong in
his approach to the issue whether the Kiddee Case infringed the CRD that the
Court of Appeal could reconsider that issue. Once they had reached the
conclusion that there had been material errors, it was, at least in principle,
open to the Court of Appeal to consider and determine the issue for itself. In this
case, correctly in my view, Magmatic does not suggest that, if, contrary to its
submission, the judge erred as Kitchin LJ held, the Court of Appeal was not
entitled to consider and determine the issue for itself. The Court of Appeal
found that there was no infringement, and this court could only interfere with
that conclusion, if we considered that Kitchin LJ had gone materially wrong in
his approach - see para 24 above.
26.
In these circumstances, the arguments of substance before us have been
limited (and rightly so) to the questions whether the Court of Appeal’s
criticisms of Arnold J’s approach, as set out in paras 41-42 and 47-48 of
Kitchin LJ’s judgment, were correct. Subject to one point, if we consider that
those criticisms were justified, then Magmatic’s appeal should be dismissed and
the Court of Appeal’s order upheld; and if we consider that they were
unjustified, Magmatic’s appeal must be allowed and Arnold J’s order restored.
The possibility of a reference
27.
However, although its primary argument is that its appeal should be
allowed, Magmatic alternatively contends that the issues raised by what I have
identified in para 21 above as the second and third criticisms, involve a point
of EU law which is not acte clair or acte éclairé, and which
therefore should be referred to the Court of Justice of the European Union, the
CJEU. The Comptroller General of Patents, Designs and Trade Marks, in his
capacity of Registrar of Designs, while very properly taking no other position
in relation to the issues on this appeal, supports the argument that there are
questions which ought to be referred to the CJEU.
28.
There is no doubt that, if we are of the view that this appeal could
only be resolved by determining a point of EU law which has not already been
determined by the CJEU (ie is not acte éclairé) or whose determination
nonetheless leaves room for reasonable doubt (ie is not acte clair),
then, as the final court of appeal in the United Kingdom, we would be obliged
to refer it to the CJEU pursuant to article 267 of the Treaty for the
Functioning of the European Union - see CILFIT Srl v Ministero della Sanità (Case
283/81) [1983] 1 CMLR 472. It is rightly common ground that no question of acte
éclairé arises, so the issue in this connection is whether this appeal
raises an issue of EU law which is not acte clair and ought to be
referred.
29.
I turn then to the three criticisms made by Kitchin LJ of Arnold J’s
judgment. The first concerns the impression created by the shape of the CRD as
against the Kiddee Case. The second criticism concerns the effect on that
impression of the respective presence and absence of decoration on the body of
the Kiddee Case and of the CRD. The third concerns the effect of the allegedly
contrasting colours of the CRD. I shall discuss these criticisms in turn, but,
before doing so, it is right to consider the proper approach to the images of a
community registered design as it has a significant bearing on all three
criticisms.
The images incorporated in a Community Registered Design
30.
Article 3(a) of the Principal Regulation identifies what is meant by
“design”, and, unsurprisingly, it refers to the appearance, which is expressed
to include a number of different factors, all, some or one of which can be
included in a particular registered design. It is, of course, up to an
applicant as to what features he includes in his design application. He can
make an application based on all or any of “the lines, contours, colours,
shape, texture … materials … and/or … ornamentation” of “the product” in
question. Further, he can make a large number of different applications,
particularly as the Principal Regulation itself provides that applications for
registration have to be cheap and simple to make. As Lewison J put it in Procter
& Gamble Co v Reckitt Benckiser (UK) Ltd [2007] FSR 13, para 48, “[t]he
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”. So, when it comes to deciding the extent of
protection afforded by a particular Community Registered Design, the question
must ultimately depend on the proper interpretation of the registration in
issue, and in particular of the images included in that registration.
31.
Accordingly, it is right to bear in mind that an applicant for a design
right is entitled, within very broad limits, to submit any images which he
chooses. Further, in the light of article 36(6), an applicant should appreciate
that it will almost always be those images which exclusively identify the
nature and extent of the monopoly which he is claiming. As Dr Martin
Schlötelburg, the co-ordinator of OHIM’s Designs Department, has written, “the
selection of the means for representing a design is equivalent to the drafting
of the claims in a patent: including features means claiming them” – The
Community Design: First Experience with Registrations [2003] EIPR 383, 385.
And, as Dr Schlötelburg went on to explain, an applicant is free to indicate
which, if any, aspects of the images of a Community Registered Design are
disclaimed:
“Where an applicant wishes to
exclude features which are shown in the representation for explanatory purposes
only, but do not form part of the claimed design, he may disclaim those
auxiliary features by depicting them in broken lines (for drawings) or by means
of colouring them (for black and white drawings or photos) or encircling them
(for any drawing or photo).”
32.
This is entirely consistent with what is stated in paragraph 4.3 of
OHIM’s Manual Concerning Proceedings Before the Office for Harmonization in
the Internal Market (Trade Marks and Designs), Registered Community Designs,
Examination of Applications (2nd ed, in force at the relevant time for
present purposes). Over and above these considerations, it is also worth
remembering that an applicant is entitled to make any number of applications.
More broadly, it is for an applicant to make clear what is included and what is
excluded in a registered design, and he has wide freedom as to the means he
uses. It is not the task of the court to advise the applicant how it is to be
done. That it may be said is a matter of practice rather than law, and if further
guidance is needed it can be sought from other sources, such as OHIM.
33.
So far as the presence or absence of colouring in any image is
concerned, in para 32 of his judgment on this case Kitchin LJ explained that:
“[a]n application for a Community
Registered Design may be filed in black and white (monochrome) or in colour. If
colour forms no part of the design then it is conventional to file the design
in black and white. Similarly, if a particular colour does form part of an
aspect of a design then it may be filed wholly or partly in that colour. So
also, if monochrome colours are a feature of the design, this can be shown by
placing the design against a background of a uniform but different colour.”
34.
That this has long been well established is supported by Dr
Schlötelburg’s article, in which he wrote that “where a design is shown in
colours, the colours are claimed, while a black and white drawing or photo
covers all colours” - [2003] EIPR 383, 385. Accordingly, as Kitchin LJ observed
at para 42 of his judgment, “the various representations [in the CRD] are shown
in monochrome, and so it must be concluded that this design is not limited to
particular colours”, and therefore “PMS cannot point to the colour of the
Kiddee Case as being a point of distinction”. There is, rightly in my judgment,
no challenge to that conclusion, which is consistent with what was said by the
Fourth Chamber of the General Court in Sphere Time v OHIM (Case T-68/10)
[2011] ECDR 20, para 82.
35.
However, there is disagreement between Kitchin LJ and Arnold J as to the
effect of the monochromatic nature and the shading on the CAD images included
in the CRD in this case. In that connection, there are two disagreements. The
first concerns the absence of ornamentation (which gives rise to Kitchin LJ’s
second criticism of Arnold J’s judgment). The second disagreement is about the
effect of the two tone colouring on the CRD images - mainly grey but some black
(which gives rise to Kitchin LJ’s third criticism of Arnold J’s judgment).
36.
I now turn to address the three criticisms which the Court of Appeal
made of the first instance judgment.
The Court of Appeal’s first criticism: the horned animal
appearance
37.
So far as the first criticism mentioned in para 21 above is concerned,
Kitchin LJ’s statements in paras 41 and 47 of his judgment that the overall
impression given by the CRD is that of a horned animal is clearly right.
Further, it is not a factor to which Arnold J specifically referred when
carrying out the exercise of comparing the CRD and the Kiddee Case. Having
conducted a detailed analysis of the similarities and differences between the
CRD and the Kiddee Case in paras 70-75 of his judgment, he rightly focussed on
“the overall impression” in para 76. In that paragraph, he identified specific
items of difference, but, crucially, he did not mention the horns on the images
of the CRD, let alone the horned animal appearance of those images.
38.
In addition, while he rightly referred to “the overall impression” in
para 77, Arnold J did not mention in that paragraph the fact that the CRD
images present as a horned animal. It is true that he observed that the Kiddee
Case “shares” the “horn-like handles” of the CRD, which may at first sight
appear to undermine the criticism. However, it appears to me that this observation
actually supports the view that the judge did not consider the horned animal
impression of the CRD as being particularly distinctive for present purposes,
because he wrongly seems to have treated the antennae and ears of the Kiddee
Case as “horn-like”. It is also true that, as Magmatic argues, Arnold J observed,
at para 64, that the horns form an important part of the CRD’s appearance and
that the clasps look much more like the nose and tail of an animal, but these
were comments made when comparing the CRD with the Rodeo not with the Kiddee
Case, and, in any event, they were directed to detail, not to overall
impression.
39.
It is unrealistic for an appellate court to expect a trial judge in
every case to refer to all the points which influenced his decision. As Lord
Hoffmann said in Piglowska v Piglowski [1999] 1 WLR 1360, 1372, “reasons
should be read on the assumption that, unless he has demonstrated the contrary,
the judge knew how he should perform his functions and which matters he should
take into account”. He also rightly said that an “appellate court should resist
the temptation to subvert the principle that they should not substitute their
own discretion for that of the judge by a narrow textual analysis which enables
them to claim that he misdirected himself”, and that applies equally to an
assessment such as that required by article 10(1) of the Principal Regulation.
However, when a judge has given a full and careful judgment, conscientiously
identifying and specifying a significant number of points which weigh with him,
an appellate court can properly conclude that his failure to mention a
significant point means that he has overlooked it. That conclusion is
particularly valid here, given that the point in question is more significant
than many of the points which the judge mentioned, because it goes to the
overall impression of the image rather than detailed features, and it is with the
“overall impression” with which one is ultimately concerned - see article 10 of
the Principal Regulation. And, while it is important that an appellate court
should not be over-critical of any judgment, it is equally important to bear in
mind that one of the main purposes of requiring a judge to give reasoned
judgments is to ensure that the parties and an appellate court can see why he
reached the conclusion which he did, and can assess whether he made any errors
of law or fact. Accordingly, while I am in full agreement with Lord Hoffmann’s
observations, I consider that the Court of Appeal was justified in its first
criticism of the trial judge.
The Court of Appeal’s second criticism: decoration of the
Kiddee Case
40.
As he explained in paras 41 and 47 of his judgment, Kitchin LJ disagreed
with Arnold J when it came to the question of the decoration on the Kiddee
Case. Kitchin LJ was of the view that the fact that the CRD image was “not
adorned with any … imagery” reinforced the impression it gave of “a horned
animal with a nose and a tail”. By contrast, he said, “the impression” which
the shape in the first example of the Kiddee Case in para 4 above creates is
“clearly influenced by the two tone colouring of the body and the spots on its
flanks”, so that “it looks like a ladybird and the handles on its forehead look
like antennae”. This, he said, effectively reinforced the conclusion that the
Kiddee Case produced on the informed user a completely different overall
impression from the horned animal embodied in the CRD design. The same
conclusion, he said, applied to the second example of the Kiddee Case, as
“[t]he stripes on its flanks and the whiskers on either side of its nose
immediately convey to the informed user that this is a tiger with ears. It is
plainly not a horned animal.”
41.
In my view, the point which Kitchin LJ was making in this second
criticism was that the absence of decoration on the CRD reinforced the horned
animal impression made by the CRD. In other words, he considered that it
supported what I have called his first criticism of Arnold J’s judgment. In my
view, there is limited force in this point, in that, unless the decoration had
been positively distracting in nature, such as flashing lights, it would have
been unlikely to have much effect in diluting the horned animal impression made
by the CRD. However, I accept that the point has some force, in the sense that,
unless it included items such as eyes and a mouth, any decoration could well
detract from the animal impression, and, even if it consisted of such items, it
could be said to distract the observer’s attention from the horns.
42.
Magmatic, however, argued that this second criticism raised a
significant question of principle, namely whether the absence of ornamentation
can, as a matter of law, be a feature of a registered design, and, if so,
whether it was a feature of the CRD in this case. Magmatic further argued, with
the support of the Comptroller General, that this question is one which should
be referred to the CJEU as it is neither acte clair nor acte éclairé.
I do not agree with either argument.
43.
As I have sought to explain, when making his second criticism, Kitchin
LJ was not raising a free-standing contention that a feature of the CRD was
that it contained no decoration. In the first place, that is not what Kitchin
LJ said. Secondly, if it had been what he had intended, it would not have been
expressed as part of the first criticism. Both points appear clear from what he
said in para 47 of his judgment, namely that it would be wrong “to eliminate
the decoration on the accused design from … consideration entirely because it
significantly affects how the shape itself strikes the eye, and the overall
impression it gives. At least in the case of this particular registered design,
the global comparison necessarily requires account to be taken of the context
in which the accused shape appears.”
44.
In those circumstances, anything I say as to whether a Community Design
can include an absence of decoration, would be obiter. Nonetheless, it is worth
expressing some views on the topic, as it was fully canvassed. First, despite
Magmatic’s argument to the contrary, it seems plain to me that absence of
decoration can, as a matter of principle, be a feature of a registered design.
Simplicity or minimalism can notoriously be an aspect of a design, and it would
be very curious if a design right registration system did not cater for it.
45.
Secondly, whether absence of ornamentation is a feature of a particular
design right must turn on the proper interpretation of the images on the
registered design. Thirdly, I accept that it may sometimes be hard to decide if
absence of ornamentation is a feature of a particular registered design,
because article 36(3) of the Principal Regulation and article 4(1) of the
Implementing Regulation preclude any verbal descriptions (see paras 8 and 9
above). Fourthly, if absence of ornamentation is a feature of a registered
design, that does not mean that because an item has ornamentation, it cannot,
for that reason alone, infringe the registered design in question: it merely
means that the fact that an allegedly infringing item has ornamentation is a
factor which can be taken into account when deciding whether or not it does
infringe that design.
46.
Two domestic cases are worth mentioning in this connection. In Procter
& Gamble, the registered design was illustrated by line drawings, which
were clearly concerned purely with external shape. Both Lewison J ([2007] FSR 13) and the Court of Appeal held, as Jacob LJ put it at [2008] FSR 8, para 40,
that “[t]he registration is evidently for a shape. The proper comparison is
with the shape of the alleged infringement. Graphics on that (or on the
physical embodiment of the design) are irrelevant.” Many line drawings simply
show a physical shape, as in Procter & Gamble, but while they can
show colouring and decoration, they are generally less appropriate for that
purpose than photographs or CAD images, which can easily show subtle shadings
and contours, as well as decoration, such as colours and ornamentation. Accordingly,
while each Community Registered Design image must be interpreted in its own context,
a line drawing is much more likely to be interpreted as not excluding
ornamentation than a CAD image. That is consistent with what Dr Schlötelburg
wrote in the article from which I have already quoted, namely that
“[b]asically, the broadest claims can be achieved by drawings showing only the
contours of the design. In contrast, a photo specifies not only the shape, but
the surface structure and the material as well, thereby narrowing the scope of
protection accordingly” - [2003] EIPR 383, 385.
47.
The notion that absence of ornamentation can be a feature of a
registered design, even where the images consist of line drawings, was accepted
by His Honour Judge Birss QC and the Court of Appeal (albeit that it was not in
dispute between the parties in the case) in Samsung Electronics (UK) Ltd v
Apple Inc [2013] ECDR 1 and [2013] FSR 9. In that case, the line drawings included
one or two small features (an opening catch and a rim around the edge), and the
natural implication was that no other ornamentation was intended, a view
supported by the fact that the plainness and transparency of the surface was
subtly indicated by a few pairs of short lines suggesting the incidence of
light on that surface. As Jacob LJ put it at para 18 in that case, “If an
important feature of a design is no ornamentation, as Apple contended
and was undisputed, the judge was right to say that a departure from no
ornamentation would be taken into account by the informed user”.
48.
I note that the same view was taken of the same Community Registered
Design by the Düsseldorf Court of Appeal (I-20W, 141/11, 24 July 2012, pp 2,
22, 26 - “without a pattern” and “without any patterning”), and the Hague Court
of Appeal (Case number 200.094.132/01, Apple Inc v Samsung Electronics Co Ltd,
24 January 2012, paras 5.1B and 5.3B1 and 6.4 - “without any embellishment”
and “without any ornamentation”). Further, the Sixth Chamber of the General
Court of the CJEU also appears to have taken the same view in the context of a
different design in H & M Hennes & Mauritz BV & Co KG v Office
for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Cases
T-525/13 and T-526/13), 10 September 2015, GC, para 37, when contrasting one
design’s “formal simplicity” with another’s “surface … which is adorned with
ornamental motifs”.
49.
Thus, in summary, while the observations in paras 44-48 above are
obiter, I consider that the Court of Appeal’s second criticism of the first
instance judgment was correct, although it amounted to a relatively minor point
which simply reinforced the first criticism.
50.
It is right, however, to address the argument whether absence of
ornamentation was a feature of the CRD in the present case. There are powerful
practical arguments against such a conclusion, namely the absence of any
apparent reason for such a limitation and the inherent unlikelihood of the
design of a child’s ride-on suitcase positively requiring no ornamentation. On
the other hand, there is the elegant uncluttered appearance of the CRD with the
play of light on the product’s surface as described by Kitchin LJ, the use of a
CAD rather than a line drawing, the existence of some specific limited colour
differentiation (the strap, strips, wheels and spokes), and (in so far as
admissible) the initial unornamented product and the contrast with Magmatic’s
subsequent registered designs (see para 3 above). Given that the Court of
Appeal did not (despite Magmatic’s suggestion to the contrary) resolve this
issue in the present case and it is unnecessary for us to do so in order to
resolve this appeal, I would prefer to leave it open. It is not as if a
decision whether the absence of ornamentation in this particular CRD would be
of much assistance in other cases; it is, I think, enough that we have decided
(albeit on a strictly obiter basis) the point of principle that absence of
ornamentation can be a feature of a Community Registered Design.
The Court of Appeal’s third criticism: the two-tone
colouring of the CRD
51.
Kitchin LJ’s third criticism of Arnold J’s judgment was that he failed
to take into account the fact that the CRD image, as exemplified in para 1
above, was in two colours, one, shown grey, for the greater part of the body
(including the horns), and the other, shown black, for the wheels and spokes,
the strap and the strip. As mentioned in para 14 above, Arnold J described the
CRD as constituting a claim “evidently for the shape of the suitcase” and that
decorations on the Kiddee Case were therefore to be ignored. On the other hand,
Kitchin LJ’s view was that the colouring contrasts on the CRD and the allegedly
infringing articles represented a potentially significant difference, as the
wheels and handles (ie horns) on the CRD rather stood out as features, whereas
on the Kiddee Case the wheels were very largely covered, and the handles (at
least on the first of the two examples in para 4 above) had the same colour as
the body.
52.
If, as in the case of the CRD, an applicant for a Community Registered
Design elects to submit CADs of an item, whose main body appears as a uniform
grey, but which has a black strip, a black strap and black wheels, the natural
inference is that the components shown in black are intended to be in a
contrasting colour to that of the main body. That conclusion is reinforced by
the short passages from Dr Schlötelburg’s article cited in paras 31 and 46
above. It is also supported, as Kitchin LJ pointed out, by the fact that other
features such as the clasps or the horns are not shown in a contrasting colour.
It was argued by Magmatic that the wheels were shown black because they had a
specific function, but I find that unconvincing: there is no logical connection
between the colour and the function, and it does not explain the black strip.
53.
Accordingly, I consider that Kitchin LJ was right in concluding that the
CRD claimed not merely a specific shape, but a shape in two contrasting colours
- one represented as grey and the other as black on the images, and that Arnold
J was correspondingly wrong in holding that the CRD was a claim simply for a
shape. Once one concludes that a registered design claims not just a three
dimensional shape, but a three dimensional shape in two contrasting colours,
one colour for the body and another colour (or possibly other colours) for
specified components, then it seems to me that it must follow that, when one
compares the allegedly infringing article with that design on a “like for like”
basis, one must take into account the colouring on that article. If the
predominant colour of the first example of the Kiddee Case shown in para 4
above was the front part and was coloured red, then one would presumably
compare it with the CRD on the basis that the CRD was principally coloured red,
but that the wheels and spokes, strap and strips of the CRD were in a
contrasting colour, and the Kiddee Case was differently coloured.
54.
I therefore consider that Kitchin LJ was right in his third criticism of
the judge. I should perhaps add that counsel for Magmatic pointed out that
Arnold J rightly took into account that the wheels on the Kiddee Case were
substantially covered by wheel arches whereas the wheels on the CRD were not.
That is plainly correct, but Kitchin LJ’s criticism was that the judge nowhere
referred to the fact that the wheels of the CRD were shown having a different
colour from the rest of the image (other than the strap and the strip).
