The UK’s Intellectual Property Enterprise Court (IPEC) in Shnuggle Ltd v Munchkin Inc & Lindam Ltd, looked at the infringement of registered and unregistered design rights, and highlighted the importance of design filing practices as they relate to computer-aided design (CAD) images. Applying the Supreme Court’s decision in the Trunki case (PMS International Limited v Magmatic Limited), the IPEC once again highlights the uncertainty regarding the scope of protection afforded to registered designs.
The Claimant (Shnuggle), a small Northern-Irish company, is in the business of designing, manufacturing and selling baby products. The first Defendant (Munchkin) is a large US company operating in the same space, while the second Defendant (Lindham) is one of Munchkin’s UK distributors.
During 2012 and 2013, Shnuggle designed and developed for production a baby bath made of expanded foam featuring a ‘bum bump,’ intended to stop a wet baby from sliding down the bath and below the water line (Mk1). Dissatisfied with the quality of Mk1, Shnuggle further developed the design in 2014, and began marketing and selling the new design (Mk2) in 2015.
Shnuggle owned two registered community designs (RCDs) for its baby bath products, both of which were at issue in this case. The first, RC No. 00224196-001 (RCD-196) was filed in April 2013 and sought protection for Mk1, while the second, RCD No. 002616763-0001 (RCD-763) was filed in 2015 in respect of Mk2, and marked considerable changes from Mk1.
RCD-196 used the below CAD images:
RCD-763 used the below line drawings:
Shnuggle brought registered design infringement proceedings based on these RCDs upon learning of Munchkin’s similar product (the ‘Sit & Soak,’ pictured below) being put on the market, while also claiming infringement of their UK unregistered design rights.
Munchkin argued that Shnuggle’s RCDs were invalid, and that the Sit & Soak was based on a pre-existing ‘commonplace’ baby bath design, and therefore did not infringe. Furthermore, they argued that Shnuggle’s unregistered design rights claim was unfounded, as the relied-upon designs were commonplace.
Register Design Right Infringement
Sitting in the IPEC, Judge Melissa Clarke held that RCD-196 was in fact valid, but that it was not infringed by the Sit & Soak. In reaching this decision, she held that the Sit & Soak created a different overall impression in the eyes of the informed user, noting particularly that the Sit & Soak’s ‘unusual tear drop shape’ distinguished it from RCD-196’s oval.
The use of CAD images in registered designs, and their impact on a registration’s scope of protection, was crucial in considering the case for infringement of RCD-196. Shnuggle argued that the light blue shading of the RCD-196 images (pictured above) should be discounted, as the informed user would perceive the images as a monochrome blue grey, meant to represent either any or no particular colours. The judge applied the Supreme Court decision in the Trunki case, finding that the CAD image colour must be taken into account when considering infringement.
The Trunki case, decided in 2016, dealt with the issue of variances within shadings of a CAD image. It was held that the darker wheels featured in the Trunki’s greyscale CAD images formed a part of the claimed design. As the alleged infringer’s version of the product had wheel covers, Trunki’s dark wheels created a different overall impression, effectively limiting the scope of protection afforded by their RCD.
Applying Trunki, the effect of the blue CAD image colour was to limit RCD-196’s scope of protection, as explained by Judge Clarke when she stated ‘if Shnuggle had wanted to register only the shape of the bath, instead of positively choosing the colour blue, it could have provided a line drawing (as it did for RCD-763) or rendered it in monochrome shades of grey.’ The Court held that, combined with other differences between RCD-196 and the Sit & Soak, the informed user would identify the difference between the blue Mk1 and the predominantly white Sit & Soak, and that therefore RCD-196 was not infringed.
Regarding the claimed infringement of RCD-763, the Court held this registered right to be invalid for lacking individual character over RCD-196, meaning they both had the same overall impression on the informed user. The European Regulation on Community designs requires registered designs to be both novel (Article 4) and possess individual character (Article 6), the latter of which is established where ‘the overall impression produced on an informed user differs from any design which has been made available to the public.’ The Court held that the differences between Shnuggle’s two registered designs, including the latter model’s lack of handles, absence of colour, differently shaped ‘bum bump’ and RCD-763’s back pad, were insufficient in creating a different overall impression between Mk1 and Mk2.
Unregistered Design Right Infringement
Shnuggle also alleged unregistered design right infringement, relying on six design elements embodied in Mk1 and Mk2, claiming that each element possessed an unregistered design right as ‘part of an article.’ Munchkin argued that these elements were features of Mk1 or Mk2’s shape or configuration, and therefore incapable of protection under section 213 of the Copyright, Design and Patents Act 1988 (CDPA).
In analysing the six elements, the Court held that two were original, but that only one (the contoured lower half of Shnuggle’s products) was not commonplace, and was therefore capable of protection as an unregistered design. Having established the design’s right to protection, the Court applied CDPA section 226(3), which states that for infringement of an unregistered design right to have occurred, the infringer must have copied the whole design ‘exactly or substantially.’ It was held that, while copying had occurred regarding the shape of the bath’s sides, these similarities did not pass the exact or substantial copying threshold, as Justice Clarke stated that she had no doubt that Munchkin had not copied the whole design exactly or substantially.
The lesson from this case is that when filing registered design applications, line drawings can have advantage over CAD images, as CAD colour shading effectively narrows the protection afforded by the resulting registration. The case illustrates the difficulties that CAD images can create for proprietors seeking to enforce broadly their registered rights against would-be infringers. It is therefore worth careful consideration of the style of drawing used in any filed design. As to improvements, RCD-763 highlights that one must consider whether the changes made to the original design in subsequent filings may fall short of creating a different overall impression on the informed user. In relation to unregistered design rights, Justice Clarke’s decision succinctly defines what constitutes a part of an article under section 213 CDPA, and provides further clarity on the standing of unregistered design rights in the UK following the implementation of the Intellectual Property Act 2014.
Ultimately, this case should serve as a warning to RCD design holders who have based their registrations on only CAD images, or for those planning to do so in the future. This is particularly important considering that, while RCD applications provide for the filing of explanatory textual commentary and qualifications, these explanations may be disregarded by the Courts when assessing a registration’s scope of protection.