Colour contrasts and surface decoration in registered designsPrint publication
In order to be capable of registration under the Community Designs Regulation , a design must be “new” and have “individual character”. It will have 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 before the filing or priority date of the design for which protection is sought.
In Magmatic Ltd v PMS International Ltd , the claimant, Magmatic, manufactured and sold a child’s ride-on suitcase under the trade mark “Trunki”. The defendant, PMS, was a distributor of a competing product – the “Kiddee” case. A striking feature of the Trunki design was that the handles gave the impression of a horned animal. One version of the design can be viewed here. The Kiddee design came in two main versions – one with handles that looked like an animal’s ears and one with handles that looked like an insect’s antennae. A version of the design can be viewed here.
Magmatic successfully claimed in the High Court that the Kiddee design infringed its registered design, the judge finding that despite some differences, the overall impression created by the Kiddee design was similar with the Trunki design. PMS appealed.
The Court of Appeal allowed the appeal and, in doing so, discussed the relevance of colour to the scope of the protection afforded by a Community registered design. The Court explained that where colour plays no part in the design, it is conventional to file an application in black and white. Where a design is registered in black and white, it protects the shape of the product in whatever colour it may be, with the result that it was not open to PMS in this case to refer to the colour of the Kiddee case as a point of distinction.
The issue, however, became more problematic where particular colours were not a feature of the design but colour contrasts were, which was the case here. In particular, in the Trunki design, there was a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other. This led to the wheels constituting a striking aspect of the design of the whole, an aspect that was absent from the Kiddee design. The judge had failed to take account of that contrast. He had also failed to take account of the surface decoration on the Kiddee case, which led to the creation of a different impression from a horned animal, which was an essential feature of the Trunki design.
The Court’s assessment of the competing designs was that the Trunki design created a “sleek and stylised” design of a horned animal whereas the Kiddee design was “softer and more rounded and evocative of an insect with antennae or an animal with floppy ears”. The Court concluded that at “both a general and a detailed level the Kiddee case conveys a very different impression”.
The judgment is very useful in showing the role that colour contrasts and surface decoration can play in determining the scope of a Community registered design.
 Regulation 6/2002/EC
  EWCA Civ 181