Registered Designs - Lutec (UK) Ltd v Cascade Holdings Ltd

 

Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) Lutec (UK) Ltd and others v Cascade Holdings Ltd and another [2021] EWHC 1907 (Pat) (09 July 2021)

This case started as an action for the infringement of two registered Community designs, namely 000540927-0001 and 000540927-0002. Before the action came on for trial, the transition or implementation period provided by art 126 of the agreement by which the UK withdraw from the EU expired.   The Senior Courts of England and Wales ceased to be Community design courts and registered Community designs ceased to apply to the UK.  Art 54 (1) (b) of that agreement provided for holders of registered Community designs to be awarded equivalent registered designs in the UK (see Jane Lambert How Brexit has changed IP Law 17 Jan 2021 NIPC Brexit and Jane Lambert IP after Brexit 26 Jan 2021 Slideshare). Those registered designs are for "Interior lights, Exterior lights" registered in the name of the third claimant under registration number 90005409270001 and "Interior lights, Exterior lights" registered in the name of the same claimant under registration number 90005409270002.  The claim proceeded as an action for the infringement of those registered designs.

The claimants complained that the defendants infringed their designs by selling the following lights:

Helios U/D

Helios U & D

The defendants admitted the sales but denied infringement.

At a case management conference which appears to have taken place before the 31 Dec 2020 because the directions refer to the registered Community designs rather than the registered designs, the following issues were ordered to be tried:

“2. Did the designer of the RCDs benefit from a very considerable degree of design freedom in developing those designs as at the date of application for the RCDs?
3. Does the Helios U/D produce upon the informed user a different overall impression from that produced by 0001?
4. Does the Helios U&D produce upon the informed user a different overall impression from that produced by 0002?”

The action came on for trial before Mr David Stone sitting as a deputy judge of the High Court on 25 June 2021.  He delivered judgment on 9 July 2021  A transcript of his judgment appears in  Lutec (UK) Ltd and others v Cascade Holdings Ltd and another [2021] EWHC 1907 (Pat) (9 July 2021).

Mr Stone took as his starting point art 10 of the Community Design Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs):

“1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.”

He referred to the Court of Appeal's judgment in Dyson Limited v Vax Limited [2012] FSR 4, [2013] Bus LR 328, [2011] EWCA Civ 1206, in which Sir Robin Jacob  said in relation to the question of whether an allegedly infringing product produces on the informed user the same overall impression:

“8. Not only is that question apparently straightforward, but, I think, it actually is. It is possible to produce much elaborate argument and evidence—some of which seems to touch upon metaphysics—but generally none of that matters. What really matters is what the court can see with its own eyes. I said (with the other members of the court concurring) as much in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] ECDR 3, [2008] FSR 8, [2008] Bus LR 801.

'[3] The most important things in a case about registered designs are:
(i) The registered design;
(ii) The accused object;
(ii) The prior art.

And the most important thing about each of these is what they look like.

Of course parties and judges have to try to put into words why they say a design has ‘individual character’ or what the ‘overall impression produced on an informed user’ is. But ‘it takes longer to say than to see’ as I observed in Philips Electronics NV v Remington Consumer Products Ltd (No.1) [1998] ETMR 124; [1998] RPC 283 at 318. And words themselves are often insufficiently precise on their own.”

9. I added this:

'[4] It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours.'"

In relation to the overall impression, His Honour Judge Hacon set out the following guidelines in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat):

“181. I here adapt the four-stages prescribed by the General Court in H&M Hennes for assessing the individual character of a Community design to the comparison of an RCD with an accused design, adding other matters relevant to the present case. The court must:

(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;
(2) Identify the informed user and having done so decide 

(a) the degree of the informed user’s awareness of the prior art and 

(b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;
(3) Decide the designer’s degree of freedom in developing his design;
(4) Assess the outcome of the comparison between the RCD and the contested design, taking into account (a) the sector in question, 

(b) the designer’s degree of freedom, and

(c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public.

182. To this I would add:

(5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison.
(6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters.”

In Magmatic Limited v PMS International Group PLC (Trunki) [2016] Bus LR 371, [2016] WLR(D) 126, [2016] UKSC 12, Lord Neuberger said at paragraph 30:

“when it comes to deciding the extent of protection afforded by a particular Community Registered Design, the question must ultimately depend on the proper interpretation of the registration in issue, and in particular of the images included in that registration.”

Referring to Sealed Air Limited v Sharp Interpack Limited and another [2013] EWPCC 23 at paragraphs 20 and 21, Mr Stone said at para [16] of his judgment that the proper interpretation of registered Community designs is a matter for the court, not for the informed user nor any expert.  Citing para 55. of his own judgment in Rothy’s Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) added that it is a question of fact, to be determined taking into account all the relevant material before the tribunal, the most important of which will be what the drawings look like.   Applying these principles, the learned deputy judge held at para [24] of his judgment that the registered Community designs were 

"a claim to shape, depicting, as they do, the overall shape of two exterior lights. Of the non-exhaustive list of 'features of a design listed in the Regulation, these images show only the lines, contours and shape, and do not show the colours, texture or materials of the product, or its ornamentation."

Having interpreted the design, the deputy judge applied Judge Hacon's 6 point test:

"(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong."

The parties agreed that the relevant sector was outdoor lights.

"(2) Identify the informed user.

The parties agreed that the informed user was “a member of the general public who is interested in purchasing outdoor light fittings for home and/or business premises.”

"(3) Decide the designer’s degree of freedom in developing the design."

It was common ground that the degree of freedom of a designer of outdoor lights was very considerable. That had the effect of requiring an allegedly infringing design to be further away from the registered design in order not to infringe, when compared to a product the designer of which has limited design freedom.  In Case T-525/13 H&M Hennes & Mauritz BV & Co KG v OHIM  [2015] ECDR 20 the General Court held at para [29]:

"Therefore, the greater the designer’s freedom in developing a design, the less likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Conversely, the more the designer’s freedom in developing a design is restricted, the more likely it is that minor differences between the designs at issue will be sufficient to produce different overall impressions on an informed user. Consequently, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that designs that do not have significant differences produce the same overall impression on an informed user (judgments in Internal combustion engine at [33], and Wristwatch case EU: T:2013:214 at [113])."

Mr Stone left the 4th step to the end and proceeded to the 5th:

"(5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison."

Mr Stone noted at para [30] of his judgment that no features of the RCDs were said to be solely dictated by technical function.

"(6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters."

The deputy judge accepted the claimants' submission that the informed user will attach a higher degree of importance to the front of the light than to the rear because he or she will assess the design in the light of how it is to be used.  Mt Stone noted attaching mechanisms on the rear of the base or box in both the registered Community designs and the Helios lights.  That indicated that the light is to be attached to a wall or perhaps a fence. When so attached, it is the front of the light that will be most visible.  That would be the part of the design to which the informed user would pay the most attention when making his or her assessment. It is such differences that will strike the informed user.

The learned deputy judge finally addressed the 4th issue:

"(4) Assess the outcome of the comparison between the RCD and the contested design, taking into account (a) the sector in question,
(b) the designer’s degree of freedom, and (
c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public."

He directed himself as follows at para [33]:

"Taking into account the sector in question and the designer’s degree of freedom as agreed by the parties and set out above, I must now step in to the shoes of the informed user and assess the overall impression produced by the RCDs and by the Helios products. It must be remembered that the comparison is not a simple listing of the similarities and differences, nor a darting back and forth between them. Rather, having assessed the similarities and differences, I must stand back, and assess the overall impression."

As to the methodology of the comparison, he quoted from Mr Justice Arnold's judgment in Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat) (11 July 2013):

“Although it is proper to consider both similarities and differences between the respective designs, what matters is the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer.”

Mr Stone compared the designs with images of the Helios products:

He listed the similarities and the dissimilarities.   He concluded at [45]:

"In my judgment, the features of the Helios products which will strike the informed user are those of the light housing. Those are the features that will be most visible once the light is installed. The box at the back will be seen by the informed user as of less importance, and whilst the differences might register with her/him, they will not be such as to produce on such an informed user a different overall impression as between 0001 and the Helios U/D and as between 0002 and the Helios U&D. This finding is reinforced by the Defendants’ concession that the RCDs are entitled to a “wide scope of protection”. Standing back, in my judgment, the Helios U/D infringes 0001 and the Helios U&D infringes 0002."

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