Waterworld : The battle of Shnuggle and Munchkin

Posted on

Last week, the Intellectual Property Enterprise Court (IPEC) handed down its judgment in relation to a dispute surrounding design rights in baby baths. The decision focuses on how the court will determine that a design possesses individual character and therefore creates a "different overall impression" on the informed user, so that it does not infringe a prior design. As her honour Judge Clarke’s judgment is a total of 78 pages, we have done our best to sponge up the decision’s information and wash off any unnecessary details to give you a squeaky clean summary of all you need to know about Shnuggle v Munchkin (apologies!). 

The case concerned design right infringement of baby baths, in which the defendant (Munchkin (US) and their UK subsidiary, Lindam) were accused of design infringement by the claimant (Shnuggle), for the release of their product, the "Sit & Soak".

 

Shnuggle claimed both unregistered design rights alongside two registered European designs for their products, "MK1" and "MK2".  Munchkin openly admitted that they had produced the "Sit & Soak" after the Shnuggle designs were already on the market, with the intention of producing a Shnuggle-inspired design, with some added Munchkin features. Munchkin relied upon four prior art designs from other competitors which they claimed showed the commonplace design of baby baths.

 

In making her decision, the Judge first invalidated Shnuggle’s MK2 saying that it lacked individual character and failed to give a different overall impression to the previous MK1.  In addition to this, she held that the “Sit & Soak” did not infringe the MK1 or any unregistered design rights that Shnuggle claimed in their product.  

 

The decision and the approach of the court in this case carries importance, in that it reinstates the "overall different impression" test from Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936. This test was also illustrated in Dyson v Vax [2011] EWCA Civ 1206, in which Dyson lost its claim of design infringement, as a competitor’s similar design was held to produce a different "overall impression".

 

This Shnuggle v Munchkin judgment reinforces this emphasis on redirecting the focus within registered design infringement, from looking at individual differences between designs, to how a design as a whole creates a different overall impression. As the Judge explained:

 

“Of course it is easier to perceive similarities and differences to describe them in words. What matters is the overall visual impression arising from a side-by-side comparison of [Shnuggle’s design] and the Sit & Soak …the informed user stands back and looks at the two together comparing them with everything in mind that I have mentioned including the prior art”. 

 

The courts appear to be adopting the imprecise science of a ‘stand back and look’ approach more and more when determining infringement.  Whilst this may provide some added ease and simplicity to such decisions, you can’t help but focus on the subjectivity of such a test.  After all, what you may perceive as a similar design, "Joe Bloggs" may perceive as completely different. So where does this leave us? Our view is that the best approach is to look at the designs in question and ask yourself whether you feel they are uncomfortably close. If the answer’s yes, you probably need to speak to a friendly IP lawyer.