Magmatic Ltd v Pms International Ltd

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeThe Hon Mr Justice Arnold,Mr Justice Arnold
Judgment Date11 Jul 2013
Neutral Citation[2013] EWHC 1925 (Pat)
Docket NumberCase No: HC13B00651

[2013] EWHC 1925 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

The Hon Mr Justice Arnold

Case No: HC13B00651

Between:
Magmatic Limited
Claimant
and
Pms International Limited
Defendant

Michael Hicks and Jonathan Moss (instructed by Briffa) for the Claimant

Richard Hacon and Chris Aikens (instructed by Gordons Partnership LLP) for the Defendant

Approved Judgment

Hearing dates: 6-7, 10-11 June 2013

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

The Hon Mr Justice Arnold Mr Justice Arnold

Contents

Topic

Paragraphs

Introduction

1–2

The development of the Trunki

3–16

The development of the Kiddee Case

17–30

The claim for infringement of the CRD

31–78

The CRD

31

Key provisions of the Regulation

32

Legal principles

33–52

Article 7(1)

33–41

The informed user

42–43

The existing design corpus

44–46

The designer's degree of freedom

47

Effect of design freedom on the scope of protection

48

Effect of differences between the registered design and the design corpus on the scope of protection

49–51

Overall impression

52

Assessment

53–78

The Rodeo

53–54

The informed user

55

The design corpus

56–58

The designer's degree of freedom

59–60

Scope of protection of the CRD

61

Overall impression: the CRD versus the Rodeo

62–64

Overall impression: the CRD versus the Kiddee Case

65–77

Conclusion

78

The claim for infringement of design rights

79–100

The legislation

79–80

Legal principles

81–86

Aspect

81

Configuration

82

Method or principle of construction

83

Original

84

Commonplace

85

Exactly or substantially to the design

86

The designs relied on

87

Assessment

88–100

Did Mr Law create design A?

88

Are designs C-F designs?

89–93

Are designs C-F methods or principles of construction?

94–95

Are designs C(2) and C(3) original?

96

Is design D commonplace?

97

Have the designs been infringed?

98–99

Conclusion

100

The claim for infringement of copyright

101

Summary of conclusions

102

Annex 1:

The Rodeo concept board

Annex 2:

the CRD, Trunki Mark I and Kiddee Case

Annex 3:

Magmatic's Particulars of Designs

Introduction

1

The Claimant ("Magmatic") manufactures and sells a child's ride-on suitcase under the trade mark Trunki. The Defendant ("PMS") imports and sells a similar product under the name Kiddee Case whose design was admittedly inspired by that of the Trunki. Magmatic contends that PMS has thereby infringed the following intellectual property rights of Magmatic: (i) Community Registered Design No. 43427–0001 ("the CRD"); (ii) design rights in a number of designs relating to the Trunki; (iii) the copyright in the artwork for the packaging of the Trunki; and (iv) the copyright in a safety notice which appears on the packaging. At trial, PMS conceded claim (iv), but disputed claims (i)-(iii). In relation to claim (i), PMS contends that, if the scope of protection of the CRD is broad enough to encompass the Kiddee Case, the CRD is invalid over an earlier design called the Rodeo.

2

The only witness called by Magmatic was Robert Law, the founder and a director of Magmatic. PMS called two witnesses: Paul Beverley, PMS's managing director and major shareholder, and Brian Turner of PMS's solicitors, who oversaw some prior art searches carried out on behalf of PMS. I am satisfied that all three witnesses were reliable witnesses.

The development of the Trunki

3

In 1997 Mr Law was studying product design at the University of Northumbria. He entered the competition for the BASF/Institute of Materials Design Award 1998 ("the Award"). This is an annual student plastic design competition (now called the Design Innovation in Plastics Award) organised by the Institute of Materials (now the Institute of Materials, Minerals and Mining) and the Worshipful Company of Horners (which includes those who work in plastics). The competition was established in 1985, and by 1998 it attracted around 120 entries each year. These included students from nearly every product design college in the UK. The six finalists were mentored by designers from BASF, who at that time sponsored the Award. The theme for the 1998 competition was "a design for luggage".

4

Mr Law had the idea of taking established technology for adult suitcases and designing a product for children that would maximise space, yet be fun and ergonomic to use. He visited a department store in Newcastle, but found little inspiration in the adult luggage on display. Finding himself in the toy section, however, he noticed that ride-on toys often featured a lift-up seat and around a litre of storage space. The storage space was limited because the toys were made by rotational moulding. Mr Law had the idea of using injection moulding to make a product that would be comfortable for children to ride on, yet would have a much larger internal space.

5

Mr Law developed this idea into a design which he called "Rodeo". He made a mock-up of his design in polystyrene and a prototype in vacuum-formed plastic. He also produced a concept board with visualisations showing the product in use (reproduced in Annex 1 to this judgment). It is the concept board which shows most clearly what the product was intended to look like and how it was intended to be used.

6

Mr Law duly won the Award, receiving a cash prize of £200 (although not a work placement which had been promised). For reasons that will appear, there is an important issue about what became public and when as a result of this. There is no dispute that the presentation of the Award was a public ceremony, albeit that it was probably mainly attended by teachers, students and students' relatives and friends in addition to the judges and representatives of BASF. Accordingly, there is no dispute that the persons who attended the ceremony will have seen the design of the Rodeo as shown in particular on the concept board, and could have taken that information away in their heads. To that extent, there is no dispute that the design of the Rodeo was made available to the public.

7

The dispute is as to whether it would have been possible for anyone who was not present at the ceremony either to find out about the existence of the Rodeo or, more importantly, to ascertain the design of the Rodeo in the period from 1998 to 20 June 2003. PMS relied on three items of documentary evidence as showing that this would have been possible. The first is a list of Award winners that is currently available on the Design Innovation in Plastics website, which refers to Mr Law as having won the Award in 1998 with the Trunki. This wording must post-date 20 June 2003, however, since the product was not called Trunki prior to then. There is no evidence that any comparable list which was available prior to 20 June 2003 referred to the Rodeo, although it seems likely that Mr Law's name would have been recorded as the winner of the Award. In any event, even now the list of Award winners does not show the design of the Rodeo.

8

Secondly, PMS relied on a photograph of Mr Law at the ceremony with the concept board in the background, which is currently available on Magmatic's website located at www.trunki.co.uk. It is clear that this could only have been posted on the website after 20 June 2003, however, since the website did not exist prior to that date. Mr Law's evidence was that, prior to posting the photograph on his website, he had kept it in a file.

9

Thirdly, PMS relied upon a portfolio posted by Mr Law on a website located at www.coroflot.com which includes images of a design referred to by the name Rodeo. Although the portfolio appears on the face of the website to have been posted on 16 July 2006, the relevant part of if refers to the Rodeo "hitting shops in summer 2003" and Mr Law accepted that he had probably posted that in 2003. There is no evidence that it was posted prior to 20 June 2003, however. More importantly, as Mr Law pointed out, the design depicted is not the Rodeo design which won the Award, but a design which dates from late 2002/early 2003 (see further below).

10

Accordingly, I find that it would not have been possible for someone who was not present at the ceremony to find out about the existence of the Rodeo, and certainly not its actual design, prior to 20 June 2003.

11

Between 1997 and 2002 Mr Law continued to develop the design. The bulk of the work took place in 2001 while Mr Law was learning to use a computer-aided design (CAD) package called Rhino. By June 2002 Mr Law had arrived at a design which he considered was sufficiently finished to show to a manufacturer. Accordingly, on 26 June 2002 he applied for UK Registered Design No. 3004793, which was registered on 23 July 2002 and lapsed due to non-renewal on 26 June 2012. Mr Law showed this design to a manufacturer in confidence, but the manufacturer was not interested. At this point Mr Law was still using the name Rodeo for the product, although the design had changed since 1998.

12

In January 2003 Mr Law visited the London Toy Fair and met a new toy company called Toyline International UK Ltd ("Toyline"). He subsequently granted Toyline a worldwide licence to manufacture and sell what became the Trunki. During early 2003 Mr Law worked intensively on translating the design of the Trunki into a physical product. This resulted in some further changes to the design, resulting in a design referred to in these proceedings as the Trunki "Mark I". Products made to this design were first sold in about May 2004.

...

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