- By Paul Sullivan
When does a design become more than just similar? This is a question with was recently considered by the Intellectual Property Enterprise Court in London.
By way of background, the Claimant (‘Shnuggle’) – a Newtownards-based husband and wife led team who featured in BBC2’s ‘Dragon’s Den’ in 2017 – designs, manufactures and sells baby products. The Defendant (‘Munchkin’) is a large US corporation in a similar line of business.
Shnuggle holds two registered Community designs:
Additionally, Shnuggle claims unregistered design rights under the Copyright Designs and Patents Acts 1988 in respect of certain elements of their Mk 1 and Mk 2 designs.
The Mk 2 product, building on their Mk 1 design, achieved significant commercial success internationally.
Munchkin introduced their ‘Sit & Soak’ product to the UK market in January 2019 which appeared remarkably similar to Mk 2.
Shnuggle sued Munchkin alleging infringement of (a) registered Community designs and (b) unregistered design rights. Munchkin counterclaimed seeking a declaration that one of the registered Community designs was invalid.
It was conceded at Trial that Mk 2 had been a point of reference in the Munchkin design. Munchkin, however, challenged the validity of the registered Community design in respect of Mk 2.
The judgement provides a useful treatise on design rights before concluding that Mk 2 registration was invalid as in lacked ‘individual character’ to distinguish it from Mk 1. Essentially it was an evolution rather than a revolution over the initial registered Community design. In the alternative, it was held that the Munchkin design was sufficiently different from Mk 2 so as not to constitute a breach.
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