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Another blow for CAD images… when black & white is better than colour

The recent case of Shnuggle Ltd v Munchkin, Inc & Lindam Ltd[1], provides a helpful reminder of how the use of CAD images in design… Read more

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The recent case of Shnuggle Ltd v Munchkin, Inc & Lindam Ltd[1], provides a helpful reminder of how the use of CAD images in design registrations can inadvertently limit the scope of the protection afforded by the design registration.

Whilst the judgment considers a number of points in respect of design rights, this practical update focusses on the significance of the CAD images in a post Trunki[2] world.

The dispute

The case concerned the design of baby baths. More specifically, baby baths with a ‘bum bump’ (a feature that prevents the infant from sliding into the water and holds them safely upright).

Schnuggle is the owner of two registered Community designs protecting the design of its baby bath (the RCDs). Schnuggle also claimed UK unregistered design rights but those are not relevant to the present issues.

One of the registrations was represented by a number of CAD images, each of which depicted the baby bath in the colour blue (see example below).

Schnuggle claimed that the defendant’s (Munchkin’s) baby bath infringed the RCDs and Schnuggle’s unregistered design rights.

The decision

HHJ Clarke found in favour of Munchkin and held that its baby bath didn’t create the same overall impression as the RCDs.

HHJ Clarke listed a number of characteristics that differed between Munchkin’s baby bath and the RCDs. Interestingly, one of those differences was the colour as HHJ Clarke held that the blue colour of Shnuggle’s CAD images must be taken into account when assessing whether the Munchkin product infringed the RCDs.

Paragraph 37 of HHJ Clarke’s judgment summarises her findings on the point:

“… it is up to the applicant for a registered design right to decide what to apply for (e.g. the design for the whole article or just part, and if so what part(s)), what features to include in the design application and what to leave out, and how to represent them. As Munchkin submits, and as I accept, per Magmatic on appeal, 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.”

The moral of the story

Don’t inadvertently limit the scope of your protection by using overly detailed CAD drawings!

Ultimately, the decision didn’t turn on the issue of colour as that was but one of a number of differences that HHJ Clarke relied on in finding a different overall impression.

However, if the colour had been the prominent distinguishing factor, Schnuggle would have rued the decision to file a blue CAD drawing – as an identical, but black and white, drawing would not have limited the scope of protection to blue versions only.

Following Trunki, this is another instance of a CAD drawing limiting the scope of the overall ‘idea’ of the product. Black and white line drawings are still currently the ‘safest’ way to illustrate the intended design when registering a product.

Whilst we appreciate that sometimes it can be a bit of a scramble to file before a grace period expires and there’s no time to prepare drawings so a photo is used, don’t forget to convert the photo to black and white unless you want to limit the protection to the colours shown in the photo. Though keep in mind that contrasting elements in a black and white photo could also form part of the protected design so we would always recommend the use of proper black and white drawings wherever possible.

Please don’t hesitate in getting in touch if you would like to discuss this in more detail with us.

[1] [2019] EWHC 3149 (IPEC)

[2] PMS International Group plc v Magmatic Ltd [2016] UKSC 12