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By Martin Douglas Hendry

20/01/20

IP Insight: Shnuggle v. Munchkin (after Trunkie) on Registered Designs

IP Insight is a series by Virtuoso Legal, the intellectual property specialists. This entry on Shnuggle v. Munchkin concerns the latest significant decision on the scope of registered designs in the Courts.

Background

This IP insight highlights how difficult it can be to uphold and enforce a Registered Design by exploring the recent case of Shnuggle Ltd v (1) Munchkin Inc. (2) Lindam LtdThis case was held in the IPEC before HHJ Melissa Clarke and served to limit the scope of a registered design – to the colour blue.

This case follows the much-criticised Supreme Court “Trunkie” case (PMS International Group Plc v Magmatic Limited [2016] UKSC 12) which caused uncertainty in the design field.

The issue

The scope of protection of a registered design is defined by its “representation”. As set out at Article 4 of the Regulation on Community Designs, representations shall consist in a graphic or photographic reproduction of the design, either in black and white or in colour. It shall be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished. Accordingly, where part of the representation is to be “excluded” from the scope of protection, this should be clearly excluded (usually by the use of dotted lines or shading).

The issue is whether shading/tonal contrast in CAD drawings is used to; claim an absence of surface decoration as part of the scope of design, exclude surface decoration from the design or claim that colour as part of the registration – thus limiting the scope of the design. This issue was unfortunately not resolved by Trunkie.

In that case, the Court of Appeal decision was upheld, which set out that the use of colour and/or contrast will serve to limit the scope of the registered design.

This, of course, has led to confusion.

The Shnuggle case

This brings us on to the present case. Shnuggle is a small company based in Northern Ireland, which designed a baby bath which was extremely successful. In order to protect their IP, they obtained two EU registered design rights for the bath, alongside their unregistered rights.

Munchkin (a larger American company) developed a baby bath under the name “Sit & Soak” which Shnuggle believed infringed their registered and unregistered design rights. Subsequently, Shnuggle brought a claim for infringement of their registered design.

Again, the issue, in this case, was the impact of colour and contrast on a registered design to the scope of protection. Shnuggle’s registered design was submitted as a CAD drawing which was a grey-blue colour to highlight contrast and shape of the design.

HHJ Clarke in this case applied Trunkie on the issue of scope of protection and set out that “where a design is registered in colour and/or contrast, then that must be taken into account when considering infringement”.

In this regard, Shnuggle submitted that the informed user “would interpret the colour in the rendered drawings as having no purpose save to indicate, in the tonal differences of the rendering, the shape of the design.” As such, the scope of the design should not be limited to the colour blue.

However, HHJ Clarke concluded, based on Trunkie that “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”. Part of HHJ Clarke’s reasoning included 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 […] or rendered it in monochrome shades of grey”.

This case highlights the lack of clarity of how representations will be interpreted, to include or exclude elements from the scope of protection. Further, it is important to note that many individuals who register designs do so themselves without the assistance of lawyers. This is merely a nuance that many will not appreciate when they make an application, but which can have truly significant consequences.

HHJ Clarke did go on to explain that she would have reached a decision of non-infringement even if the design was not limited to the colour blue. However, this has set an uneasy precedent going forwards and only time will tell how this will impact cases going forwards.

Our insight

Unfortunately, these cases are having the undesired impact of potentially punishing innovation rather than rewarding it.

Imagine you have a client who has spent years developing a product that is truly innovative. They have used a CAD drawing to create their product as a prototype. The uninitiated might understand that a CAD drawing *is* a design, however due to intricacies in the law they often do not serve to protect a design as part of a registered design application. As such, many such companies have taken steps to protect it by registering the design. Then they find out their protection is truly limited and narrow in scope, enabling others to piggyback off their hard work because their protection is limited – in this case, to the colour blue.

Following these recent judgments, there are now many design registrations that are more limited in scope than intended or anticipated by their owners. As this area of law evolves, it is more important than ever to get specialist advice before registering a design to ensure you secure the protection you both want and need.​

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