A recent decision of the English Court of Appeal highlights the importance of carefully considering how a design should be represented in a design registration in order to maximise protection.  In particular, the decision demonstrates how a design registration might be ineffective if it contains inessential elements or features that are both:

• easily modified by third parties in order to avoid infringement; and
• depicted in a way that leaves them open to be construed as essential to the overall impression of the design.

In Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181 the English Court of Appeal overturned a previous decision of the High Court by finding that Magmatic Ltd's Registered Community Design (RCD) for the enormously successful "Trunki" ride-on suitcase for children was not infringed by the rival product "Kiddee Case".

It was common knowledge that the Kiddee Case was inspired by the Trunki and intended to be a cheaper alternative to it. However, as both courts noted, whether the RCD was infringed by the Kiddee Case depended on whether the overall impression produced by the Kiddee Case was the same as that produced by the representations contained in the RCD.

The RCD for the Trunki comprised six monochrome computer-generated images showing the exterior of the case from various angles (see picture below). The appearance of the actual Trunki products was irrelevant, particularly the fact that the Trunki suitcases resembled a range of different animals, as it was the RCD representations which defined the scope of the monopoly.

The Kiddee Case came in two basic versions: an animal version with handles formed to look like ears (see picture) and an insect version with handles formed to look like antennae. Each version came with different graphical designs on their surface in order to resemble a cow, leopard, pig, tiger, bee or ladybird.

At first instance, the High Court considered that the Trunki RCD was only for the shape of the suitcase, therefore making the proper comparison one between the shape of the RCD and the shape of the Kiddee Case alone, ignoring all other features of the Kiddee Case including its surface decorations. The Court of Appeal considered this approach involved two errors and overturned the decision.

• Firstly, the trial judge failed to carry out a global comparison having regard to the nature of the RCD and the fact that one of its essential features was that the various handles and clasps shown in the RCD created the overall impression of a horned animal.  Therefore, the impression created by the other features of the Kiddee Case, apart from its shape, should have been taken into account. For example, in relation to the ladybird version of the Kiddee Case, the overall impression was clearly influenced by the two tone colouring on its body and the spots on its flanks, and the handles on its forehead resembled antennae. This conveyed a completely different impression to the horned animal of the RCD. Similarly, in relation to the tiger version of the Kiddee Case, the stripes on its flanks and the whiskers on either side of the nose immediately conveyed the impression of a tiger with ears. Again, this was plainly not a horned animal. 
• Secondly, although the trial judge was correct in finding that the RCD was not limited to any particular colours (as the representations were in monochrome), it was incorrect to ignore the fact that the RCD nevertheless depicted a two tone colour contrast between the wheels and body of the Trunki. The Court of Appeal found this to be a "fairly striking feature" that was not present in the Kiddee case and which should have been taken into account in conducting the global comparison.

Registered designs have classically relied on line drawing representations of the design to define the scope of infringement. In more recent times, it has become increasingly common for registered designs to use photographs or computer generated 3D images (such as those used by Magmatic) as representations instead.

Where the design is clearly visible in black and white copies of these photographs or computer-generated images, a strategic decision has often been made that these representations are preferable as they are a direct representation of the design and using them avoids the costs of employing an industrial draftsperson to prepare line drawings.

In Magmatic's case, features shown in the computer-generated images were central to the Court of Appeal's finding of non-infringement. The Trunki decision therefore raises the question of how Magmatic might have sought broader design protection for the Trunki suitcase in its design registration.

The test for design infringement in Australia is whether the alleged infringing article "embodies a design that is identical to, or substantially similar in overall impression to, the registered design". The Designs Act 2003 (Cth) provides guidance on the application of this test in section 19, requiring that the "person making the decision is to give more weight to similarities between the designs than to differences between them", have regard to the state of development of the prior art base for the design, and, if the design application in which the design is disclosed includes a statement identifying particular visual features of the design as new and distinctive, to have particular regard to those features in the context of the design as a whole.

This test is thus similar to the one which was applied in the UK Trunki decision. It is important to remember that designs are intended to protect the shape and configuration of an article, and not how the article works (which is better protected by a patent).

In general, when devising a strategy to maximise protection of a design, the following should be considered:

• Ensure that the representation of the design does not include any inessential elements which could be interpreted as essential elements which are then held to be relevant to the overall impression. Careful wording of the Statement of Newness and Distinctiveness will be important in this respect.
• Ensure that any computer generated representations, if used, do not include elements of shading (or colour contrasting) which could be found to add a further essential element of the overall impression of the design.
• Consider having a series of registered designs related to the one product comprising line drawing representations of the shape of the design as well as a registered design for each of its protectable components. Line drawings enable decisions to be made regarding the level of detail of the shape which is represented. For example, in Magmatic's case, one of the registered designs could have used solid lines to outline the shape of the suitcase and dotted lines for exemplary handles. Such a registered design would focus on the shape of the suitcase. The specific shape of the handles could vary and would not be an essential part of the overall impression formed by the design (ie whether horns provide a different impression than ears or antennae). Similarly, the side clasps could be represented in dotted lines in some of the designs so as to be non-limiting.
• Consider whether there are obvious modifications to the design which might be made which would enable a competitor to develop a product which is too close. For example, in the area of suitcases, should a design registration allow for a suitcase with just two wheels rather than four? What about a suitcase with the wheels merged into a front roller and a rear roller, which changes the visual effect of four wheels but achieves the same function?