Designs - Shnuggle Ltd v Munchkin, Inc









Jane Lambert

Intellectual Property Enterprise Court (HH Melissa Clarke) Shnuggle Ltd v Munchkin, Inc and another [2019] EWHC 3149 (IPEC) (20 Nov 2019)

This was an action for the infringement of registered Community designs and unregistered design right and a counterclaim for a declaration of invalidity of one of those RCDs.  The action and counterclaim were tried by Her Honour Judge Melissa Clarke on 23 and 24 Sept 2019. She delivered her judgment on 20 Nov 2019 the transcript of which is at Shnuggle Ltd v Munchkin, Inc. and another [2019] EWHC 3149 (IPEC) (20 Nov2019)

The Parties

The claimant is a Northern Irish company called Shnuggle Ltd. ("Shnuggle") which designs, makes and markets baby products. The first defendant, Munchkin Inc. ("Munchkin") is a much bigger American company in the same industry. The second defendant, Lindam Ltd., ("Lindam") distributes Munchkin's products in the UK.

The Registered Designs

Shnuggle is the registered proprietor of the following registered Community designs:
The Unregistered Design Rights

Shnuggle also claimed design right in the designs particularized in Annex 3 of Judge Melissa Clarke's judgment. 

The Alleged Infringement

Munchkin made and distributed through Lindam the following baby bath which it called the "Sit and Soak" bath in the UK.











Shnuggle alleged that the "Sit and Soak" bath infringed its registered Community designs and unregistered design right.

The Defence

Munchkin and Lindam denied copying, challenged the validity of  RCD 763 and the subsistence of unregistered design right in the designs in Annex 3.

The Issues

At a case management conference on 26 March 2019, His Honour Judge Hacon ordered the following issues to be tried:

"Registered Designs
i) Whether RCD763 is valid;
ii) Whether the Sit & Soak bath is an infringement of the RCDs;

Unregistered Designs
iii) Whether design right is capable of subsisting in the Shnuggle Designs as being designs for the whole or part of an article;
iv) Whether the Shnuggle Designs are original;
v) Whether the Shnuggle Designs are commonplace;
vi) Whether the Sit & Soak is an article which has been made by copying the Shnuggle Designs;
vii) Whether the Sit & Soak is an article which has been made to produce articles exactly or substantially to each of the Shnuggle Designs."

Community Design Regulation

The Community Design Regulation (Council Regulation (EC) No 6/2002of 12 December 2001on Community designs(OJ EC No L 3 of 5.1.2002, p. 1)) provides for the protection of designs that are new and have individual character. in paragraphs [24] and [25] of her judgment, Her Honour reminded herself of the definitions of "new" and "individual character" in the Regulation and the scope of protection. Lord Justice Jacob had pithily summarized the law in Dyson Ltd v Vax Ltd : [2013] Bus LR 328, [2012] FSR 4, [2011] EWCA Civ 1206: 

“The most important things are the registered design, the accused object and the prior art, and the most important thing about each of these is what they look like”.

Those words had been approved by the Supreme Court in PMS International Group Plc v Magmatic Ltd [2016] WLR(D) 126, [2016] Bus LR 371, [2016] UKSC 12.  Between paragraphs [26] and [37] the learned judge considered the guidance in the Regulation and the case law on the meaning of "novelty",  "individual character", "the informed user", "technical function", "design freedom" and "design representation". 

Informed User

Judge Melissa Clarke noted at [39] that it was "common ground that the informed user is an interested and observant adult user of baby baths who may be a parent, carer, or relative of the baby who is to use it."

Design Corpus

She also noted at [40] that it was common ground that there was "a wide and varied design corpus in the general market for baby baths of which the informed user would be aware" and Her Honour was shown examples of those different designs.

Methodology

Even though the judge said at paragraph [13] of her judgment that there the defendants' challenge to the validity of RCD196 was not pursued at trial, she considered whether that design was new and had individual character between paragraphs [41] and [43]. The task that she set herself at paragraph [38] was to "deal with whether the Sit & Soak infringes RCD-196 before going on to consider whether RCD-763 is valid and, if so, whether the Sit & Soak infringes it."

Whether the "Sit and Soak" infringed RCD196

Art 10 of the Community Design Regulation provides:

"1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. 
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."

In accordance with paragraph 2 of art 10, the judge considered the technical constraints and the degree of freedom of the designer.  Between paragraphs [44] and [47] she considered what features of the design of a baby bath are solely dictated by technical constraints or other design constraints.  She concluded at [47] that there is still a large degree of design freedom in the size (within a range), shape and overall appearance of a baby bath that can be seen in the surprisingly wide range of baby bath designs contained in the design corpus.  In paragraphs [48] and [49] she considered features that are common to the design corpus.  In paragraphs [50] to [52], she considered the scope of design ascertainable from the registration and concluded that the informed user would perceive the registered design as blue.  Finally, she compared the "Sit and Soak" with RCD196 and the prior art and concluded at [59] that the "Sit and Soak" does not infringe RCD196.

Her Honour set out her reasons at [58]:

"Of course it is easier to perceive similarities and differences than to describe them in words. What matters is the overall visual impression arising from a side-by-side comparison of RCD-196 and the Sit & Soak. In my judgment if the informed user stands back and looks at the two together, directly comparing them with everything in mind that I have mentioned including the prior art, the Sit & Soak will produce a different overall visual impression in his or her mind. I would also have reached this conclusion even if I had found that RCD-196 was not limited in scope to the colour blue. The key reasons are in the Sit & Soak’s unusual teardrop shape compared to RCD-196’s oval, the extended, lengthened back to form a handle with a hole punched out of it, the distinctive shape and contrasting colour of the back pad extending up into and to the top of the handle, and the difference between the solid, flat, rim around the whole of the RCD-196 and the delicate floating edge of the front and sides only of the Sit & Soak."

Whether RCD763 is valid

Munchkin argued that RCD was invalid because it lacked individual character having regard to RCD196 and Shnuggle's existing product range. The judge agreed.  She said at [63]:

 "In terms of whether a design is new, this is measured against identical designs which have been made available to the public. I do not understand Miss Lane’s submissions for Munchkin to be that the RCD-763 is identical to the Shnuggle Mk 1 save for features which differ only in immaterial details, so she sensibly does not make the argument that RCD-763 is invalid as it is not new. Rather she submits that each of the other differences identified above are trivial from the perspective of the overall impression of the informed user, such that the RCD-763 does not make an overall impression which differs from that produced by RCD-196 or the Shnuggle Mk1 (both being prior disclosure), and so it is invalid for lack of individual character."

She added at [65]:

"I am with Munchkin. The handles at the side of the RCD-196 are extremely unobtrusive and their absence in RCD-763 makes little difference to the visual impression. The back pad is different, but it is also common both in fact and in the manner of its execution, so the informed user will give it no weight. The flange is common and of no interest to the informed user in my judgment. The differences to the underside I consider that the informed user will accord no weight. The rim is a rolled edge but the visual impression is of a similar flat wide rim to that of RCD-196 around the entirety of the top of the bath. The island shaped bump is slightly different to the RCD-196 in shape and placement but I do not consider it to be different enough to give, together with the absence of handles, a clearly different overall visual impression, particularly including the level of design freedom that I have found is accorded to a baby bath designer. Accordingly I find that RCD-763 is invalid for lack of individual character."

Whether the "Sit and Soak" infringed RCD763

The judge disposed of this point very quickly at [66]:

"If I am wrong about that, and it does produce a sufficiently different overall visual impression to RCD-196 to be valid, I consider that the Sit & Soak nonetheless will give a different visual impression to the informed user to RCD-763, for the same reasons I gave in respect of RCD-196, and so I would find it not to infringe RCD-763."

Copyright Designs and Patents Act 1988

Judge Melissa Clarke noted that s.213 (1) of the Copyright, Designs and Patents Act 1988 ("CDPA") provides that design right is a property right that subsists in an original design. For the purpose of Part III of the CDPA, "design" means "the design of the shape or configuration (whether internal or external) of the whole or part of an article" and a design is not "original" if the design was commonplace in the design field at the time of its creation.

Whether Design Right can subsist in Part of an Article

Her Honour noted at [73}:

"It is Shnuggle’s case that that the Shnuggle Designs are each a design of “part of an article”. Munchkin pleads that each of the Shnuggle Designs is a design of an “aspect of the shape or configuration… of the whole or part of an article”, and not “part of an article”, and so, following the amendment of section 213 to excise ‘aspects’, are unprotectable. Miss Lane goes further and submits for Munchkin that there is no rationale or reason for Shnuggle to seek to exclude particular aspects of the designs of the Shnuggle Mk1 and Shnuggle Mk2 in the Shnuggle Designs, and so it can be inferred that the reason it seeks to do so is because the Sit & Soak does not reproduce those features and because the Sit & Soak does not substantially reproduce the overall designs for the whole of the articles. Miss Lane argues that the purpose of the amendment to section 213 (1) was to prevent claimants from chopping products up into little pieces in order to try and emphasise those pieces which are similar or the same in the designs and ignore the bits which are different."

The judge did not accept the defendants' submissions.  Relying on Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Another  [2009] ECDR 11, (2009) 32(4) IPD 32031, [2009] EWHC 26 (Pat), Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2)  (1997) 20(3) IPD 20022, [1996] EWHC Patents 1, [1997] RPC 289 and A Fulton Company Ltd. v Totes Isotoner (UK) Ltd[2003] EWCA Civ 1514 she noted at [74] that it is specifically provided in s. 213 (2) that the right can subsist in relation to the shape or configuration of the whole or part of an article.  She also rejected their submission that a part of an article has to be separately created.  She concluded at [92] that a part of an article for s. 213 (2) is an actual, but not abstract part which can be identified as such and which is not a trivial feature.  She allowed Shnuggle to argue that design right subsisted in the designs coloured pink in Annex 3 to her judgment.

Originality

Munchkin and Lindam challenged originality on two grounds.  First, they denied that designs (2) to (6) of Annex 3 were original in the copyright sense in that they consisted of only minor modifications upon design (1). Secondly, they contended that all the designs were commonplace in the design field in question at the time of creation.

The judge declined to decide whether the old skill and labour test or the new intellectual creation test applied to design right because nothing turned on the point in the case before her.  Referring to Mr Justice Henry Carr's judgment in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat) (25 Aug 2017), she said at [114]: 

"no new design right will arise where changes to an existing design are made which are only minor and do not give rise to a new originality in the whole. I consider that the addition of the flange/base with screw holes alone is only a minor change and is insufficient to confer originality on Shnuggle Design (4). The amendments to the both flange/base and the shape of the bump together are, on balance and in my judgment, applying Neptune, also insufficient to confer originality upon Shnuggle Design (2) and (3)."

Munchkin conceded that (1) was original in the copyright sense and the claimant's evidence persuaded her that (5) and (5) had been original.

As for the question whether any of the designs was commonplace, Her Honour directed herself at [119] that:

"What is and is not commonplace involves different considerations for the UDRs than for the RCDs. In registered designs, the court must consider the whole of the design corpus through the eyes of the notional informed user of the product, the design corpus in this case being general baby baths, not adult or specialist baths. In unregistered designs the court is considering only the specifically pleaded prior art to determine what would be considered to be commonplace by the notional designer in the design field. Mr Corcoran describes that as an industrial product designer with at least several years’ experience who has previously worked with a broad portfolio of products. Mr Murphy would fit well within that description, in fact. Mr Murphy is less clear on the notional designer in his report, although he described him as a designer of baby baths, but he did not object to Mr Corcoran’s characterisation when it was put to him in cross-examination, and so I accept it. The relevant design field should take into account the sort of designs with which a notional designer would be familiar (Lambretta Clothing v Teddy Smith) and both Mr Corcoran and Mr Murphy agreed this would include adult baths as well as baby baths."

She also quoted Russell-Clarke & Howe on Industrial Designs, 9th Ed. at paragraph 4-050:
“In considering what effect is to be given to the exclusion of protection of “commonplace” designs, it should be born in mind that design right is capable of subsisting not merely in the shape or configuration of a whole article but also in any part of that article. It may be rare that the entire design of a complete article with all its details can be said to be “commonplace” however, unless an article is of a wholly new kind, or of a very rare kind, there will almost always be parts of the design of an article which are commonplace, particularly if its features are looked at at a high enough level of generality. It can therefore be seen that the exclusion of “commonplace” designs from counting as original has the effect of restricting the level of generality of the features in which the author of a design is entitled to claim design right. Thus, competitors may copy an article, provided they copy only at such a general level that the features they have copied are commonplace. However, design right may still subsist in the detailed implementation of features which are commonplace at a general level:

'Nevertheless while I accept that it could be said to be commonplace for a flat folding umbrella to have a rughly rectangular handle, that does not mean that the shape or configuration of any particular handle is commonplace merely because it is roughly rectangular. Within the broad parameters of size and shape which [the defendant] says are to be expected of handles for flat folding umbrellas, there is considerable scope for detailed design work to be undertaken, and for the creation of a shape or configuration which has its own special qualities and which is not commonplace” [from A. Fulton v Totes]'

In addition to the case where the overall shape of an article is commonplace when considered at a certain level of generality, there will be cases where small details or embellishments or other features will be commonly used in the industry. The effect of the exclusion of “commonplace” designs is that such features may freely be copied, with the proviso that the particular way in which commonplace details are deployed may be the subject of valid design right and so protectable, and that a valid design right can clearly subsist in an original and non-commonplace combination of features each of which viewed on its own is commonplace.”

Munchkin produced evidence that all the designs (1), (5) and (6) in Annex 3 were commonplace. The judge accepted the contention in relation to design (6) but not in respect of (1) and (5).

Copying

As only (1) and (5) of Annex 3 remained, Judge Melissa Clarke considered whether those designs had been copied.

She considered that the similarities between the bump on the "Sit and Soak" and design (5) raised an inference of copying. It was, therefore, necessary for Munchkin to explain those similarities.  Muchkin discharged that obligation by adducing evidence of independent design.  As for (1) she found some evidence of copying but it did not result in articles that were exactly or substantially to the design.  It followed that the unregistered design right claim failed.

Findings

The judge presented her findings in a summary at the end of her judgment but before the Annexes:

"Issue (i) – Is RCD-763 valid?   No
Issue (ii) – Is the Sit & Soak bath an infringement of the RCDs?  No
Issue (iii) – Is design right capable of subsisting in the Shnuggle Designs as being designs for the whole or part of an article?  Yes.
Issue (iv) – Are the Shnuggle Designs original (excluding consideration of commonplace)?
Design (1), Yes
Designs (2), (3) and (4), No
Designs (5) and (6), Ye
Issue (v) – Are the Shnuggle Designs commonplace?
Design (1), Yes at a high level of generality
Designs (5) and (6), Yes
Issue (vi) – Is the Sit & Soak an article which has been made by copying the Shnuggle Designs?
Design (1), indirect copying in part.
Designs (5) and (6) No.
Issue (vii) – Is the Sit & Soak an article which has been made to produce articles exactly or substantially to each of the Shnuggle Designs?  No."

Comment
This is a very detailed and careful judgment which contains a useful review of many of the authorities on design registration and design right.  It addresses many points on both areas of law that are uncertain or obscure. It is therefore likely to appear frequently in skeleton arguments.

Anyone wishing to discuss this article, registered or registered Community designs or unregistered design right generally may call me on 020 7404 5252 during normal office hours or send me a message through my contact page.

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