Scope of registered designs still causing confusion
On the Intellectual Property Office (ICO) website, a how-to guide of design registration depicts a blue computer-aided design (CAD) image as an example of a suitable image for upload.
However, the recent case of Shnuggle v Munchkin (2019), the latest in a line of similar cases, demonstrates the difficulty in relying on CAD images, especially those in colour, to enforce registered design rights. The court has confirmed that any colour used will limit the scope of the registered design and, therefore, should be used with caution.
What is the scope of protection?
The scope of protection of a registered Community design includes any design which does not produce on the informed user a different overall impression to the original registered design.
If you were to register a design using a CAD image with specific features, such as the blue colour of the cube above, for example, then the features you include could form part of the design, even if that was not your intention. If a competitor were to later launch a similar or identical product without the specific features (e.g. a cube in a different colour), you run the risk of the court finding that the newer product gives a different overall impression and therefore, there is no infringement of the original.
Shnuggle v Munchkin
Shnuggle owned two registered Community designs for a baby bath with a bump to stop a baby from sliding into the water. The first design, RCD-196, was depicted using CAD images and a blue colouring:
The second, RCD-763, which had been registered a couple of years later, had an adjusted "bump" and was registered using line drawings:
Shnuggle claimed that Munchkin's "Sit & Soak" bath (pictured below), infringed its design rights.
Shnuggle argued that the blue colour of the CAD image used to register RCD-196 should form part of the design and that it would represent, to the informed user, any colour or no colour at all. The judge disagreed, applying Trunki, and confirmed that the colour choice limited the scope of Shnuggle's design; commenting that Shnuggle could have provided a monochrome CAD image, or a line drawing, rather than positively choosing the colour blue.
The court found that, in relation to RCD-196, Munchkin's product gave a sufficiently different overall impression to Shnuggle's for a number of reasons, including its teardrop shape, elongated back, drainage plug and white colour (as RCD-196 was taken to be blue), and as a result, there was no infringement.
The judge did note that she would have found that the Sit & Soak product gave a different overall impression, even if RCD-196 had not been limited by colour.
With regard to RCD-763, the judge found this to be invalid as it lacked individual character when compared with RCD-196, and there would be no infringement in any event for the same reasons as above.
This case is in line with the Supreme Court's decision in Trunki, where surface decoration was taken into account when assessing the overall impression of a design. It seems that even a lack of decoration can be a feature of a particular design, demonstrating the level of precision needed in design registration applications going forward.
As a result of the ongoing confusion surrounding the scope of registered designs, the ICO published a practice note (DPN 1/16) setting out guidance on the use of representations in applications. The guidance states:
"[w]hen using more detailed CAD-type representations, the visible presence of apparently-incidental features such as, for example, shading and light reflection, may still be taken into account by a Court or Tribunal, and may have the effect of limiting protection to shape 'and more'. Therefore, when seeking to protect shape-only, applicants are advised to use simple line drawings, without any colour or tonal differences, and without any visible surface features or decoration."
Applicants should be wary of using colour in design images, as colour is likely to form part of the design's overall impression and could limit the scope of protection.