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Munchkins, Shnuggles…and Trunkis?

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Controversial Registered Design decision continues to echo in the developing case law

The Intellectual Property & Enterprise Court (IPEC) has this week (20 November 2019) ruled that baby bath maker Shnuggle's Registered Design for one of its products was not infringed by a rival product from competitor Munchkin.

Shnuggle relied on two Registered Community Designs (referred to in the judgment by the abbreviated references RCD-196 and RCD-763) as well as unregistered design rights to argue that Munchkin's "Sit and Soak" baby bath infringed its rights in two of its products.

Munchkin argued that the Sit and Soak did not infringe and was in fact based on pre-existing "commonplace" designs for baby baths (and that therefore Shnuggle's Registered Community Designs were in fact invalid).

Although IPEC Judge Melissa Clarke found that Shnuggle's RCD-196 was valid, covering a design that she held to be original, the Munchkin "Sit and Soak" formed a sufficiently different overall visual impression upon the informed user not to constitute an infringement of that design.

Conversely, she held that RCD-763 which had effectively been developed to protect updated versions of the RCD-196 product lacked individual character, and was invalid.

L to R - Shnuggle Mk1, Shnuggle Mk2, Munchkin Sit & Soak

The Judge also found that there was insufficient evidence of "substantial or exact copying" to make a finding of infringement of Shnuggle's unregistered rights.

In making her judgment, however, Judge Clarke was asked to address the question of the scope of protection afforded by a Registered Community Design based upon a CAD (Computer Aided Design) rendering which produced an image of the Shnuggle product shaded a blue colour. Shnuggle argued that the "informed user" would interpret the shading as having no purpose except perhaps to indicate light and shade in a 3-dimensional object, and that therefore the scope of their Registered Design protection was purely and simply for the shape of the baby bath.

The Judge, citing the Supreme Court's decision in the 2016 Magmatic v PMS ("Trunki" v "Kiddee Case") litigation, accepted Munchkin's contrary submission that (regardless of Shnuggle's intentions) in this case the informed user would perceive the blue colouring to be part of the registration, and that therefore the scope of protection is limited by this choice of a particular colour (just as in Magmatic the Supreme Court upheld the Court of Appeal's finding that the use of a CAD rendering of the Trunki design, with a positive absence of surface decoration operated to limit the scope of that registration).

Magmatic's "Trunki" as it appears in CAD rendered form as a Registered Community Design

Judge Clarke said, "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 present case did not turn upon this finding, but this is another illustration of the continuing implications of the Magmatic case in Registered Design law.

Lord Justice Richard Arnold (who as Mr Justice Arnold gave the first instance decision in Magmatic which was overturned on appeal) warned in a lecture to IP professionals in Leeds the day after the Shnuggle judgment of the implications of this reasoning for Registered Design holders who have relied upon CAD renderings as the basis for their registration (many of which almost incidentally include some element of colour or shading), coupled with the fact that (as the case law has already made clear) textual commentary and qualifications filed with a Registered Community Design application (but currently not published) must be disregarded by Courts assessing the scope of protection afforded by the registration.

He advocates for reform of the system for Registered Community Design application, which may take the form of inviting applicants to complete a "tick box" section (similar to one currently used for EU Trade Mark applications) positively confirming whether they are intending to protect a design which consists of, includes, or is absent of surface decoration, or whether in fact they wish to protect the shape of the design irrespective of any surface decoration subsequently applied to it.

Speaking at the recent event in Leeds, Lord Justice Arnold warned that in any event, any reform is extremely unlike to be retrospective in application, so holders of Registered Community Designs based on CAD renderings rather than (e.g.) line drawings should be alert to the fact that their scope is likely to be confined by any colouring or surface decoration (or indeed by the positive absence of the same) included in that CAD rendering.

As is occasionally the case, pending any reform this appears to be a situation where the law finds itself out of step with the practicalities of the modern industrial and product design process.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.
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