Contributors
A recent decision of the UK's Intellectual Property Enterprise Court in Shnuggle Ltd v Munchkin, Inc & Lindam Ltd[1] is further confirmation of the ongoing uncertainty that can attend representations on the scope of registered designs.
Background
Article 10 of Council Regulation No. 6/2002/EC ("Regulation") provides that '…the scope of protection conferred by a Community [European Union wide] design shall include any design which does not produce on the informed user a different overall impression…'. Article 10(2) of the Regulation states that '…In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration…'.
The extent to which the designer chooses to use colours in CAD images as representations of the design for which protection is sought, has been considered in this case by HHJ Melissa Clarke. The claimant, Shnuggle, designs, manufactures and sells baby products. In 2012 to 2013, it developed a baby bath with a 'bum bump': a smooth protuberance in the bottom of the bath to impede a baby from sliding under the water. On 20 April 2013, Shnuggle applied for design protection of the first version of its product ("MK1") by way of EU Design No. 2224196 ("RCD-196"). Significantly, RCD-196 consisted of eight views of the MK1 from different angles, all of which representations were blue-coloured CAD images.
After a couple of years, Shnuggle became dissatisfied with MK1 and thus, in 2015, it launched a new version of the bath with an island shaped bum bump, i.e. a protuberance that, unlike with the MK1, did not extend the full width of the bottom of the bath ("MK2"). This would allow a baby's legs to be positioned either side of the bump. In addition, the MK2 did not contain some handles that were present in the MK1 version. Protection was sought by Shnuggle for the MK2 by way of EU Design No. 2616763 ("RCD-763"); however, on this occasion, Shnuggle used line drawings – not CAD images – to represent the product design.
Proceedings were issued in the Intellectual Property Enterprise Court against Munchkin Inc, a USA manufacturer, and Lindam Ltd, Munchkin's UK distributor, for its manufacture and sale of a baby bath with a bum bump that was sold under the "Sit & Soak" brand (the "Munchkin Product"). Shnuggle alleged that the defendants' dealings in the Munchkin Product infringed its registered rights under RCD-196 and RCD-763 and also infringed Shnuggle's rights as owner of subsisting UK unregistered design right ("UKUDR"). The defendants denied infringement and challenged the validity of RCD-763 on the basis that it lacked individual character over the earlier published design, RCD-196 and MK1.
Decision
At trial when addressing the scope of protection that should be afforded RCD-196, the claimant contended that the blue colouring on the images could be discounted. The claimant argued that the informed user would perceive the rendered CAD images in RCD-196 as off white or a bluey grey monochrome intended to represent any colour or none at all. HHJ Clarke disagreed with this contention and held, following the Supreme Court decision in the Trunki case (PMS International Group Plc v. Magmatic Ltd[2]), the blue colour of the CAD images in RCD-196 must be taken in account when assessing whether the Munchkin Product infringed the registered rights of the claimant. The use of the colour would serve to limit the scope of the registered design. In particular, at paragraph 52 of her judgment, the judge commented that '…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. In my judgment that colour choice limits the scope of protection…'.
As a result, the judge considered that, along with other differences between RCD-196 and the Munchkin Product, the 'informed user' would when assessing the overall impression identify the difference with the predominantly white colour of the Munchkin Product. The judge held that RCD-196 was not infringed by the Munchkin Product.
With regard to the challenge to RCD-763, the judge held that this registered right was invalid in that it lacked individual character over MK1 and RCD-196. To be registrable under the Regulation, a design has to (i) be novel and (ii) possess individual character. Under Article 6 of the Regulation, individual character arises where '…the overall impression it [the design that is the subject of the application to register] produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public… [in the case of a Community design] before the date of filing the application for registration or, if a priority is claimed, the date of priority…'.
Finally, the judge held that, although the defendants were aware of the claimant's products and had had these in mind when creating the Munchkin Product, they had not substantially copied such designs as to constitute an infringement of the claimant's UKUDR.
Comment
- Although the Regulation does allow for limited descriptions to accompany the representations of any registered designs, bizarrely the Regulation also states that such descriptions '…shall not affect the scope of protection of the designs as such…' (Article 36(6) of the Regulation).
- Accordingly, as in this case, such descriptions cannot be used to exclude any colouring of the CAD images, e.g. to explain that the claimant here intended the design in RCD-196 to be in monochrome and not restricted to their blueish colour.
- This and other cases since the Trunki decision of the Supreme Court has led to calls that Article 36 of the Regulation should be amended so that descriptions do form part of the design and will be able to affect the scope of protection. If such amendments were to take place, the Regulation would become more akin to a design patent system such as that used in the USA.
- Meanwhile, pending any reforms to the Regulation, applicants should be wary of using CAD images, especially those with colour, as representations for designs. Line drawings will remain the preferred manner for representing designs while courts interpret narrowly the Supreme Court decision in Trunki.
