In the best-named case of 2019*, Shnuggle v Munchkin was a claim for registered and unregistered design infringement in the “Sit & Soak” bath produced by Munchkin. Shnuggle claimed that Munchkin had infringed two Registered Community Designs (RCD’s, referred to as the Mk1 and the Mk2), as well as six UK unregistered designs (“UDR”) from both the Mk1 and Mk2. Examples of each are below:
RCD in the Mk1 RCD in the Mk2 Example of the UDR (protecting “The shape of the sides and underside of the design below the line marked “AA”)
Before we get submerged in the detail (pun very much intended), it is worth noting what I think is the key takeaway from the judgment; Her Honour Judge Clarke found that the Shnuggle Mk1 design would be considered by the informed user to be registered in blue (rather than to protect the shape across any colour). Shnuggle had argued that the shading was just to show the shape and contours of the design, and it was never their intention to restrict the design by colour. The court disagreed, citing the Supreme Court decision in Magmatic v PMS (the “Trunki” decision), which held that the use of contrasting colours in a CAD drawing which illustrated the shape (in that case black and grey) meant the resulting RCD was limited to contrasting colours.
The finding that any CAD drawing in a certain colour will only grant protection in that colour could cause difficulties, particularly when courts will disregard textual commentary filed with (but not published alongside) an RCD. In light of this it may be preferable for designers to file line drawings where possible and avoid this difficulty. The judge held there was no infringement of the Mk1 RCD as, in light of various pieces of prior art, the Sit & Soak produced a different overall impression.
When it came to the Mk2 RCD, the design was held invalid as the differences between the Mk1 and Mk2 designs were too trivial for the Mk2 to be considered new. It should be remembered that, when considering an update or re-vamp to a design which has been registered, the older design (here the Mk1) will be considered as prior art when considering whether the re-vamped design (here the Mk2) is “new”.
Key here was consideration of what amounted to a “part” of a design; the Intellectual Property Act 2014 amended the law (s. 213(2) of the Copyright, Designs and Patents Act 1988) so that a “design” is now defined as (words in square brackets having been removed):
“…the design of [any aspect of] the shape or configuration (whether internal or external) of the whole or part of an article”
Judge Clarke considered the law change meant that a “part” could not be abstract or trivial; it needed to be an actual part of the article which could be identified. Applying this, only two of the six parts of the Shnuggle designs claimed were valid (including the example below, which applied to the shape and sides below the line marked "AA") and neither of these were infringed.
From a practical perspective, the removal of “any aspect of” from the law means that, when relying on parts of any design, owners will need to ensure that these are sufficiently “concrete” so as to attract protection.
This case is unlikely to lead to a flood of design right litigation, but it does contain lessons that designers would do well to “tap” into…
where a design is registered in colour and/or contrast, then that must be taken into account when considering infringement, and the use of colour and/or contrast will serve to limit the scope of the registered design.