Shnuggle Ltd v Munchkin, Inc.
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 20 November 2019 |
| Neutral Citation | [2019] EWHC 3149 (IPEC) |
| Date | 20 November 2019 |
| Court | Intellectual Property Enterprise Court |
[2019] EWHC 3149 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
New Fetter Lane
London
HER HONOUR JUDGE Melissa Clarke
sitting as a Judge of the High Court
Mr Michael Hicks (instructed by Gowling WLG) for the Claimant
Ms Lindsay Lane QC (instructed by D Young & Co) for the Defendant
Hearing dates: 23 and 24 September 2019
HTML VERSION OF JUDGMENT
INTRODUCTION
This case involves design rights in baby baths. Baby bath design has become significantly more sophisticated since I last purchased one about 13 years ago, which was little more than an elongated bucket. They are now available in a myriad of sizes, shapes and colours with numerous features such as collapsibility for storage, detachable cups to pour water, integral drains etc. Of particular importance to this case is the development of a common feature which appears to be colloquially known in the field as a “bum bump”. This is a feature which is intended to stop a slippery wet baby from sliding down the bath and underneath the surface of the water. It is generally (but not always) a moulded ‘lift’ at the bottom of the baby bath, so that the baby's bottom sits in the space to the rear of it and the baby's legs sit over or around it, hence preventing slippage. It has the added benefit of providing support to free the carer's hands to wash the baby.
The Claimant (“ Shnuggle”) is a small company based in Northern Ireland, which designs, manufactures and sells baby products. The First Defendant (“ Munchkin”) is a large company based in the US, which does the same. The Second Defendant (“ Lindam”) is an indirect subsidiary of Munchkin. It is based in the UK and distributes Munchkin's products here. Mr Michael Hicks appears for Shnuggle and Ms Lindsay Lane, Queen's Counsel, appears for Munchkin and Lindam.
Shnuggle and the Shnuggle Mk1 and Shnuggle Mk 2 baths
In 2012 and 2013 Shnuggle (through its director and product designer Adam Murphy) designed and developed for production a baby bath made from expanded polypropylene foam, which it first sold on the market in January 2014. It sold about 700 units in total: half in the UK and half to retailers in Spain and Poland. I will refer to this baby bath as the Shnuggle Mk 1.
Fig 1a, 1b, and 1c: Shnuggle Mk 1
Shnuggle was not satisfied with the production quality of Shnuggle Mk 1 and so it developed that design further between August and December 2014, producing a version made from thinner, injection moulded polypropylene. This first sold on the market in the UK in early 2015. I will refer to this baby bath as the Shnuggle Mk 2.
Fig 2a, 2b: Shnuggle Mk 2
The Shnuggle Mk 2 has achieved significant commercial success in the UK, Europe, North America, Asia and Australia, selling online and through major retailers. These include, in the UK, John Lewis, Argos, Mothercare and Mamas and Papas.
Shnuggle own two registered Community designs with which this claim is concerned (the “ RCDs”):
i) No. 002224196-001 (“ RCD-196”) filed on 20 April 2013 in respect of the Shnuggle Mk 1 (see Annex 1 to this judgment);
ii) No. 002616763-0001 (“ RCD-763”) filed on 20 January 2015 in respect of the Shnuggle Mk2 (see Annex 2 to this judgment).
Shnuggle also claims UK unregistered design rights under section 213 of the Copyright Designs and Patents Acts 1988 (“ CDPA”) in respect of 6 designs (“ UDRs”) which relate to certain parts of the Shnuggle Mk 1 and Shnuggle Mk 2 baby baths (“ Shnuggle Designs”). The Shnuggle Designs are identified in the Particulars of Claim at paragraphs 12(1) to (6) and at Annex 5 thereto. Some (but not all) views of the Shnuggle Designs have been set out, conveniently, in a single table in the Claimant's skeleton argument, and I reproduce that at Annex 3 to this judgment.
Munchkin and the Sit & Soak bath
Mr Quinn Biesinger, senior product designer of Munchkin, designed a baby bath for Munchkin in October and November 2017. This was first sold on the market in the UK in January 2019 under the name “ Sit & Soak”. The Sit & Soak is sold online and through retailers including Argos. Munchkin accepts: (i) that there is no evidence that Mr Biesinger saw or had access to the Shnuggle Mk 1; and (ii) that Mr Biesinger had a sample of the Shnuggle Mk 2, which was a point of reference and an inspiration for the design of the Sit & Soak. Indeed, an internal email of 26 October 2017 briefing Mr Biesinger during the design process describes his objective as “aiming for a Shnuggle inspired design with some added Munchkin flair and features”. After a meeting on 1 November 2017 in which Mr Biesinger had presented some designs, he was instructed to “Head more toward Shnuggle based on Amazon reviews”.
Fig 3a, 3b, 3c: Sit & Soak
Fig. 4a, 4b and 4c below show the Shnuggle Mk 1 (left), Shnuggle Mk 2 (centre) and Sit & Soak (right) side by side from the top, side and underneath.
The parties' cases
Shnuggle claims that the Sit & Soak infringes both the UDRs and the RCDs.
In respect of the UDRs, Munchkin and Lindam dispute subsistence of the rights, deny copying and deny infringement.
Munchkin and Lindam rely on the following pleaded prior art as commonplace designs:
i) The Tippitoes mini bath (“ Tippitoes”):
Figs. 5a, 5b and 5c: Tippitoes
ii) The Mothercare slipper bath (“ Mothercare slipper”):
Figs 6a, 6b, 6c: Mothercare slipper
iii) The Amalfi slipper bath (“ Amalfi”), which is not a baby bath:
Figs. 7a, 7b, 7c: Amalfi
iv) The Mebby Cocoon portable baby bath (“ Mebby Cocoon”):
Figs. 8a, 8b, 8c
v) The Shnuggle Mk 1 (see above).
In respect of the RCDs, Munchkin and Lindam deny infringement and by their counterclaim challenge their validity on the basis of prior art. However this was narrowed at trial as the challenge to the validity of RCD-196 was not pursued. Accordingly only the validity of RCD-763 remains in issue.
It is not disputed that if the Sit & Soak bath infringes either the UDRs or the RCDs, Lindam is also liable, as both Lindam and Munchkin accept joint responsibility for the sale of the Sit & Soak in the UK.
THE ISSUES
His Honour Judge Hacon made a directions order on 26 March 2019 which limited the issues for determination at trial. Those are reproduced below, amended slightly to reflect the position at trial:
Registered Designs
i) Whether [RCD-763 is] valid;
ii) Whether the Sit & Soak bath is an infringement of the RCDs;
Unregistered Designs
iii) Whether design right is capable of subsisting in the Shnuggle Designs as being designs for the whole or part of an article;
iv) Whether the Shnuggle Designs are original;
v) Whether the Shnuggle Designs are commonplace;
vi) Whether the Sit & Soak is an article which has been made by copying the Shnuggle Designs;
vii) Whether the Sit & Soak is an article which has been made to produce articles exactly or substantially to each of the Shnuggle Designs.
The Evidence
As is usual in IPEC, HHJ Hacon directed that the statements of case stand as the evidence in chief. He further directed that the parties be permitted witness statements of fact in respect of issue 1 (validity of the RCDs), 4 (originality), 5 (commonplace) and 6 (copying).
He directed expert evidence, including from Mr Murphy as an in-house expert, on issue 1 (validity of the RCDs), issue 2 (infringement of the RCDs), issue 5 (commonplace), issue 6 (copying) and issue 7 (exactly or substantially), with the evidence on issues 1, 2 and 7 being limited to comparative drawings and explanations.
In addition, the parties have prepared a chart in the form recommended as useful by HHJ Hacon in Action Storage Systems Limited v G-Force Europe.com Limited [2016] EWHC 3151 to assist the court in considering individual features of the designs.
Shnuggle relies on a single witness: Mr Adam Murphy as both a witness of fact and an expert witness. He filed a witness statement dated 14 June 2019 and an expert report dated 2 August 2019 and was cross-examined and re-examined.
Munchkin and Lindam rely on the following witnesses:
i) Mr Quinn Biesinger, the lead designer of the Sit & Soak, as a witness of fact. He filed a witness statement dated 13 June 2019 upon which he was cross-examined and re-examined.
ii) Mr Nicholas Trumbo as a witness of fact. He filed a witness statement dated 13 June 2019 which, subject to some agreed redactions, is not disputed. Accordingly he did not attend trial.
iii) Mr Michael Corcoran, industrial designer, as an expert witness for the Defendants. He filed a report dated 2 August 2019 and was cross-examined and re-examined.
I found Mr Murphy and Mr Biesinger to be good, straightforward witnesses of fact. I am satisfied that each of them endeavoured to assist the court with truthful evidence to the best of their ability, recollection and belief. Mr Murphy did, as Ms Lane submits, have a difficult job in being both witness of fact and expert but I consider that he did so carefully and avoided too much elision of those roles, although inevitably there was some. Ms Lane in particular says that there were concessions he should have made as an expert which he did not make, probably because of the close identification he had with the Shnuggle baths as their designer. I accept that, but they were few.
I found Mr Corcoran to be a good expert of assistance to the court.
I will consider the claims in respect of the RCDs first before moving onto the UDRs.
THE REGISTERED DESIGN CLAIMS
Legislation
Council Regulation 6/2002/EC of 12 December 2001 on Community designs (“ the Regulation”) applies. The relevant Articles include the following:
“ Article 4
Requirements for...
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