## Facts

- Magmatic Ltd. owned a Community Registered Design (CRD) for the “Trunki” children’s ride-on suitcase, filed in 2003 and depicted in six monochrome CAD images.
- The registered images showed a hard-shell wheeled suitcase with an animal-like form, horn-like protrusions, distinct tonal contrast (dark wheels/strap/strips against a lighter body), and no surface ornamentation.
- PMS International Group Plc imported and sold “Kiddee Case” ride-on suitcases with a similar functional configuration but with prominent colors and surface decorations designed to resemble specific animals.
- Magmatic sued PMS for infringement, alleging the Kiddee Case produced the same overall impression on the informed user as the CRD.
- The trial court found infringement, treating the registration largely as a shape-only “horned animal” design; the Court of Appeal reversed, emphasizing decoration and tonal features shown (and not shown) in the registration images.
- Magmatic appealed to the UK Supreme Court.

## Issues

1. How should the “overall impression” of a registered Community design be determined when the registration consists of monochrome CAD images, including whether tonal contrasts and the absence of decoration are protected aspects of the design?
2. Whether PMS’s Kiddee Case products produced the same overall impression on the informed user as Magmatic’s registered design, constituting infringement under the Community designs regime.

## Decision

- The Supreme Court dismissed Magmatic’s appeal and affirmed the finding of no infringement.
- The Court held the protected design is what appears in the registration images, not a generalized concept of a ride-on children’s suitcase.
- The tonal contrasts visible in the CAD images (and the plain, undecorated appearance) formed part of the registered design’s overall impression.
- Comparing overall impressions from the standpoint of the informed user, the Kiddee Case’s prominent animal-themed decoration and differing visual treatment of features created a different overall impression.

## Legal Principles

- The scope of a registered Community design is determined by the visual features disclosed in the registration representations.
- The “overall impression” test compares the registered design and the accused product from the viewpoint of the informed user, taking account of the designer’s degree of freedom and functional constraints.
- Monochrome CAD depictions may communicate protectable visual characteristics beyond three-dimensional shape, including tonal contrasts and the presence or absence of surface ornamentation.
- Extensive surface decoration and stylization can be sufficient to differentiate overall impression, even where products share similar functional configuration.

## Conclusion

The Court held that the Kiddee Case did not infringe Magmatic’s registered design because the registration images conveyed a plain, two-tone, stylized form, while the accused products’ animal-specific decoration and differing visual emphasis of features produced a different overall impression on the informed user.


Magmatic Ltd. v. PMS Int'l Grp. PLC, [2016] UKSC 12 (U.K. 2016)