February 20, 2020
The high-profile case of Shnuggle v Munchkin has a significant impact on the way designs are registered. In this article for Intellectual Property Magazine (an extended edition of his original comments in November 2019), associate Max Thoma analyses the implications.
Shnuggle v Munchkin shows the continuing impact of the Magmatic Ltd v PMS Intl Ltd (Trunki) Supreme Court decision of 2016.
This Intellectual Property Enterprise Court (IPEC) case related to a dispute about design rights in baby baths. Shnuggle, a Northern Irish manufacturing company, alleged that Munchkin, a large US-based competitor (and the co-defendant Lindam, a subsidiary of Munchkin), infringed Shnuggle’s two registered Community designs and their UK unregistered design rights, related to its eponymous Shnuggle baby bath by producing and selling a product named Sit & Soak.
Shnuggle’s earliest registered design seems to have been the output of a Computer-aided design (CAD) package, which commonly show drawings in a solid colour (blue in this case) so as to indicate curvature to the user of theCAD package. Shnuggle opted to file the ‘raw’ blue drawings in its registered design application, rather than converting them to line drawings. This resulted in Her Honour Judge Melissa Clarke interpreting the drawings as being limited to the colour blue, following the Trunki decision, as opposed to the white colour of the allegedly infringing product. This emphasises the dangers inherent in the use of easily accessible drawings in registered design applications, rather than drawings which are properly prepared.
However, in this case, the judge made the point that limitation to the blue colour was not determinative in the outcome of the case. The Sit & Soak was found not to infringe Shnuggle’s first registered design as a result of the significantly different overall impression created by the elongated ‘teardrop’ shape of the back of the Sit & Soak and the ‘floating edge’ on the front and side of the Sit & Soak (among other less important differences, including the white colour).
Shnuggle’s second registered design was based on line drawings and was seemingly marginally more similar to the Sit & Soak. However, the judge considered that it did not produce a different overall impression to Shnuggle’s first registered design, and so the second registered design was invalid in the light of the first. For good measure, the judge also commented that even if the second registered design were valid, the Sit & Soak would not infringe for the same reasons given in relation to the first registered design. Thus, although it is probable that Shnuggle would have been in a somewhat better position if it had filed a more considered initial design application based on line drawings, the decision seems to indicate that the judge would have in any case considered the differences to be too great for a registered design infringement claim to succeed.
With its registered design infringement claims failing, Shnuggle was forced to rely on its claims for infringement of design right, which were based on various sub-sections of the Shnuggle product, rather than the whole product. There was some discussion whether these sub-sections were “part of an article” following the amendment to the relevant law by the Intellectual Property Act 2014. In particular, Munchkin submitted that a “part” must be separately created, rather than being a disembodied part of a single article. The judge disagreed with this particular contention, but reaffirmed other judges’ views in recent decisions that the part cannot be disembodied and abstract. The judge summarised that a part of an article is “…an actual, but not abstract part which can be identified as such and which is not a trivial feature.” This provides useful guidance for designers and manufacturers as to what can be asserted in a design right claim.
Although Shnuggle succeeded in showing that its claim related to actual “parts”, many of these parts, relating to the design of the most recent Shnuggle product, were deemed not to be original over a previous version of the product, or otherwise simply commonplace. The design right in the exterior of the sides and base of the original Shnuggle was considered to be original and to have been copied by Munchkin from the Shnuggle product – but since this copying was not exact or substantial, the design right claim failed.
This case shows the pitfalls inherent in attempting to enforce unregistered design rights in the absence of a suitable registered design. The case also reiterates the importance of filing the correct drawings in a registered design application. It may be easy to feel sympathy for Shnuggle, who effectively failed at the final hurdle to show infringement of their design right – and it will certainly be interesting to see if an appeal results.
This article was originally published in Intellectual Property Magazine in February 2020.
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