In a recent (and unusually quick) trial before the United Kingdom’s Intellectual Property Enterprise Court (IPEC), two UK registered designs for outdoor wall lights were found to have been infringed by a competitor’s similar products.
The decision in Lutec (UK) Limited vs Cascade Holding Limited highlights the importance of selecting how products are illustrated in design registrations and how this can be critical to the scope of protection afforded to the proprietor.
Lutec (UK) Limited (Lutec) is owner of registered Community designs (RCDs) for two of its outdoor wall lights and had sued Cascade Holdings Limited (Cascade) for infringement of those registered designs by sale in the UK of its “Helios” outdoor wall lights.
For comparison, each of Cascade’s Helios lights is shown in the table below next to a representative image from Lutec’s respective RCD:
The claim was initially filed by Lutec on 14 August 2020 on the basis of the two RCDs and in the UK court in its capacity as a Community Design Court. However, the case was heard well after 1 January 2021 when the Brexit transition period ended and so the case continued to be heard in the IPEC relying on the equivalent UK registered designs which were automatically created at that date, namely UK design numbers 90005409270001 and 90005409270002. No distinction was made between the RCDs and the subsequent UK registered designs, so the case continued without complication on that issue.
It is worth noting that the validity of the RCDs was not challenged by Cascade in its claim and so only infringement was to be assessed in the trial.
Key points in the decision
1. Line drawings
One of the central points of the decision focused on how line drawings are interpreted in determining the scope of protection afforded by the registered designs.
On the contrary, Cascade argued that the blank spaces between the lines of the registered design drawings were effectively a claim to an absence of surface decoration. Cascade’s Helios lights had multiple vertical parallel ridges/grooves on the curved outer surface and so it argued this created a very different overall impression to that of the registered design.
The judge agreed with Lutec that its design registrations claim only the shape of the product and no claim is made to the presence or absence of any colours, texture, material, or ornamentation. The surface ridge/groove features of the Cascade lights were therefore not relevant as a distinguishing feature over the registered designs. Rejecting Cascade’s arguments, the judge pointed out that the UK design regime permits written disclaimers which can be used, for example, to claim an absence of surface decoration if that is the applicant’s intention, but this was not present in this case. However, given that scope-limiting descriptions are not permitted in the RCD regime and since, as mentioned above, the UK designs in the present case automatically arose from an earlier pre-Brexit RCD, a written disclaimer in these UK registered designs could not have been present anyway.
In deciding on this point, the judge highlighted that interpretation of the RCD is a matter for the court, not experts or a notional “informed user”. The judge also referred to a number of past cases and firstly drew the distinction between the present case and the famous Trunki design case, where absence of surface ornamentation was found to be a feature of the registered design. However, in the Trunki case, the registered design was represented by a CAD rendering whereas in the present case, line drawings were used to illustrate the registered design. The judge also referred to the Proctor & Gamble (“Febreze”) case which affirmed that a line drawing registered design claimed the shape of the product and that any surface ornamentation or graphics on the alleged infringement is “irrelevant”. The judge reiterated a quote from the decision of that latter case that “a line drawing is much more likely to be interpreted as not excluding ornamentation than a CAD image”.
2. Degree of freedom of the designer
Some oft-discussed aspects of design law, such as the identity of the informed user, the relevant industrial/business sector of the designs, and features dictated by technical function, were only briefly touched upon in this decision. However, the degree of freedom of the designer in creating the designs was an important issue.
Cascade had in fact agreed with Lutec that, in the sector of outdoor lights, the degree of freedom of the designer is very considerable. The result of this concession by Cascade was that an allegedly infringing design must be considerably further away from the registered design in question for it not to infringe. Consider this situation as opposed to where there is a crowded design field where the degree of freedom of the designer is very narrow and so small differences between an allegedly infringing design and a design registration would be taken to be more significant in giving a different overall impression on an informed user. Cascade therefore had an uphill battle arguing non-infringement, as smaller differences between its products and the registered designs were more likely to be overlooked.
3. Overall impression and importance of design elements
Having determined the above points on the scope of protection afforded by the line drawings of the design registrations and the considerable degree of freedom in the design field, the judge had to assess whether the Helios lights gave the same overall impression as those of the registered designs. In the decision, the judge stated that this assessment is “not a simple listing of similarities and differences”, nor of a “darting back and forth” between the RCDs and alleged infringements but (citing the decision in the Trunki case again), “what matters is the overall impression produced on the informed user by each design”.
The judge did have to assess features put forward by the parties as contributing or detracting from the same overall impression and followed previous case law principles that “some design elements are more equal than others”. That is, some features, although differing between the RCD and alleged infringing product, are minor or would not strike the informed user (if noticed at all), whereas other differences, such as if in prominent locations on the product, would have a greater effect on the overall impression to an informed user.
Upon consideration of all of the above factors, including the RCDs being deemed not to claim an absence of surface ornamentation, the degree of freedom of the designer being very considerable, and finding the alleged differences between the RCDs and the Helios lights to be minor, the judge found that both Helios lights infringed the respective RCDs.
Lessons from the decision
Design practitioners have long advised of the benefits of filing registered designs using line drawings without shading, colour, or surface graphics or ornamentation wherever possible to obtain the broadest scope of protection. This case again confirms this advice.
Another important factor in the decision was the subject matter and sector concerned of the designs and that the degree of freedom of the designers was determined to be very wide. This worked in Lutec’s favour as a number of differences between the registered designs and the Helios lights were considered insufficiently significant to give a different overall impression and thereby avoid infringement. The relevant sector and design freedom should therefore be given careful consideration by registered design owners (and product manufacturers) in assessing options in potential infringement proceedings.
This case could also have ended differently if validity was at issue. As mentioned, Cascade did not challenge the validity of the designs (late submissions on earlier similar designs were not admitted into proceedings). It is therefore advisable, as a defendant, to consider an extensive prior art search in such proceedings to seek to invalidate a registered design you are alleged to infringe.
Finally, this trial, heard over videoconference, lasted just over one hour. As the judge observed, a comment from the Febreze case decision that “by and large it should be possible to decide a registered design case in a few hours” “has been oft quoted, but rarely observed”. This case followed that theory with thanks from the judge to the parties for their thorough preparation, and although the limited number of issues to be assessed was a factor, it is encouraging for design owners seeking a speedy resolution in future disputes.