Designer Beware – Supreme Court finds good product design, bad Registered Designs

United Kingdom

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

Case Comment: PMS International Group Plc (Respondent) v Magmatic Limited (Appellant) [2015] UKSC 12

Supreme Court Decision: BAILII

To view Olswang's in-depth analysis of the decision, click here.

The Supreme Court has dismissed an appeal filed by Magmatic Ltd seeking to enforce a Community Registered Design (CRD) for its popular children's ride-on suitcase, the TRUNKI®. The decision confirms that a rival ride-on suitcase created by PMS International Ltd does not infringe Magmatic's CRD because, even though it copied Magmatic's idea, it creates a different overall impression to the CRD. The judgement has been maligned for failing to protect British innovators, and for introducing "uncertainty, chaos and confusion among Britain's design community," but focusing on such commentary risks ignoring an important and timely health warning to the creative industries: registered designs will not automatically cover an idea or concept.

Responding to increasing consumer demand for discount shopping, copy-cat product producers have stronger incentives than ever to create "me-too" products. Technologies like 3D printing also increase the ease with which such products can be brought to market. Designers facing these challenges are right to look for robust design protection strategies. This decision underlines that careful consideration of the images which make up a CRD is crucial, as is anticipating how third parties may try to circumvent design protection.


This decision shows that the scope of protection afforded by a registered design is not necessarily commensurate with the inventiveness of the corresponding product, and so highlights that it is prudent to undertake careful and strategic thinking in order to maximise protection for inventive products. For instance, as Magmatic found, it is easy for designers to find their protection limited if they do not give sufficient consideration to the content of their design images.

Two factors severely limited the scope of protection that Magmatic's CRD conferred.

  1. Magmatic released a prototype model of its ride-on suitcase 5 years prior to filing the CRD. This meant that some features of the CRD were not unique, and narrowed the scope of its overall impression. The earlier prototype design was also a ride-on animal-shaped suitcase, so the CRD couldn't be said to produce that overall impression (or it would have been invalid for not being "new"). This was problematic because once the overall impression of a CRD is determined, only products which visually create the same overall impression will infringe. This excludes from infringement any products that create an overall impression which is different, even if that impression is one which is thematically linked to that of the CRD. In this case, because the CRD produced the overall impression of a horned animal (rather than just a generic animal) the PMS products (which produced the impression either of an insect or an animal with ears) avoided infringement.
  2. The images that dictate the features of the CRD conveyed that the design did not cover just the shape of the product, but covered that shape in combination with specific colour contrasts. This created a further point of difference between the CRD and the alleged infringement. Magmatic argued that the CRD should cover the shape of the product in any colour combination because it was filed in monochrome. However, unlike other designs for which this interpretation has been accepted, Magmatic's CRD was illustrated not by line drawings, but by images taken from computer aided design software. The images show certain parts of the design (including its wheels and strap) in darker shades than the main body. Magmatic contended that this was simply because computer design software shows components which are removable or replaceable in a different shade. However, the Supreme Court, whilst stressing the importance of appropriate design drawings, ruled that these differences in shade should be interpreted as a feature of the design. Accordingly, the design was in fact limited to a shape in a particular colour configuration and as a result, when comparing the CRD and the accused product it was correct to take into account the differences between the colouring schemes of each. This decision is clearly one which is limited to its very particular facts. Nevertheless designers can learn from Magmatic's ordeal. Whilst design law will continue to play an important (and cost-effective) role in protecting creative ideas, those seeking design protection should bear in mind that it is intended to protect against exact or very similar designs. This makes it challenging to protect the concepts and ideas that make successful products attractive to consumers and copy-cats alike. Would-be infringers are becoming increasingly sophisticated, and in some cases specifically look for flaws in design protection before deciding to produce copy-cat product lines. To best defend against this growing threat, designers will need to adopt a robust and strategic design protection strategy; working with skilled attorneys to analyse the aspects of a design which hold value, and to pre-empt ways that design ideas may be adapted, changed or mimicked by those looking to side-step design protection.

Take away points

  • The strength of design law protection will not necessarily follow the strength or value of your product’s design. In particular, designs do not automatically protect ideas or concepts, and protect visually similar products only.
  • Rights holders seeking to maximise protection should put themselves in the mind of a potential copy-cat and consider how any underlying concepts could be mimicked, adapted or tweaked.
  • The earlier disclosure of the Rodeo design significantly narrowed the scope of protection of the CRD. Design right holders should carefully consider the impact of how and when they exhibit design ideas or prototypes.
  • Ideally, bespoke images should be created for registered designs - the images are as important as the claims in a patent as they must unequivocally communicate any features which are (and are not) claimed in the design. Line drawings, showing only the contours of a design, are often the simplest way to protect a shape in any decorative format, but this may not be appropriate for all designs. Design conventions such as dotted lines can also be used to either highlight important aspects of designs, or to exclude features from the claimed scope of the design.
  • Rights holders should be prepared to file multiple designs to best protect products, and these should include obvious variations. Significant savings can be realised by filing a number of designs simultaneously.