I recently wrote about how a case heard in the Intellectual Property and Enterprise Court (Response Clothing Limited -v- Edinburgh Woollen Mill Limited [2020] EWHC 148 (IPEC)) has arguably made it easier for designers to be able to protect their designs for three dimensional items (e.g. for furniture, jewellery, ceramics and fashion items), by claiming they qualify as copyright works.
Another (less reported case) heard last year also improved the scope of IP rights protection for designers.
The case in question (Shnuggle Limited v Munchin, Inc. and Anor [2019] EWHC 3149 (IPEC)) involved a dispute relating to design rights in baby baths, but the legal principles set out in the Court’s judgment have relevance for designers of all goods.
What was the Shnuggle case about?
The claimant asserted, inter alia, that the defendants had infringed the claimant’s UK unregistered design rights, which relate to certain parts of their baby baths (rather than the designs of the baby baths as a whole).
For example, the claimant claimed unregistered design right in the design for the external shape of the sides of one of their baby baths, below the line marked “AA”:
In other words, they claimed design right in the part not coloured pink and did not claim design right in the part coloured pink.
But does the law allow designers to claim UK unregistered design right in a “part of an article”, if that part is not a separate component of (or separately created from) the whole article?
What has the Shnuggle case decided?
The judge in the case held that UK unregistered design right can exist in a part of an article, even if the part is not separate component of (or separately created from) the whole article, provided that it is not an abstract part of the article, nor a trivial feature.
In other words, a claimant can ‘chop up’ their products into several, separate parts/pieces and claim separate UK unregistered design rights in each of those various parts/pieces, thus enabling them to pursue a defendant that has copied only one (or more) of those parts, and ignoring the parts which it has not copied and which are different.
By way of illustration, the judge held that the example of the design for part of the baby bath shown above in this article did qualify for UK unregistered design right.
Why is this good news for designers?
Often infringers don’t copy the design of a whole product, but only integral parts of it. The Court’s judgment in the Shnuggle case has thus made it easier for designers of products to prevent third parties from copying parts of their designs.
Of course, for the part that has been copied to qualify for UK unregistered design right protection it must still be an original design, not commonplace in the design field at the time of its creation and must not be excluded because of some other legal restriction (e.g. the law states that design right does not subsist in features of shape or configuration of an article which enable the article to be connected to another article, so that either article may perform its function).
For any more information please contact Carl Steele on: c.steele@ashfords.co.uk.
