The Court of Appeal has held that surface decoration can be taken into account when considering the overall impression produced on the informed user including where the registered design is in black and white in Magmatic Ltd v PMS International Ltd  EWCH Civ 181.
The Court of Appeal held that "the impression created by the registered design is that of a horned animal. It is a sleek and stylised design and from the side has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast, the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and detailed level the Kiddee Case conveys a very different impression."
Magmatic's registered design, shown in the left hand column above, does not include any graphical designs on the surface of the suitcase. However, the defendant's Kiddee Case, shown in the middle and right hand column above, includes animal stripes and features. The Court of Appeal held that the surface design was relevant, and that the surface design of the Kiddee Case "significantly affects how the shape itself strikes the eye" and such differences should be taken into account when assessing the overall impression given by both designs. It highlighted that the use of contrasting colour on the wheels and the main body of the registered design was another striking feature that was not present on the Kiddee Case design. It is interesting to compare this with the judge's approach in Procter and Gamble v Reckitt Benckiser where the registered design consisted of a line drawing of the product (rather than a photograph) and surface artwork was disregarded.
This decision reduces the protection provided by registered designs. The broadest protection is likely to be effected by registration of a line drawing rather than photographs of the product. It remains to be seen if Magmatic will pursue an appeal to the UK Supreme Court.
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