Lutec (UK) Ltd v Cascade Holdings Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 09 July 2021 |
| Neutral Citation | [2021] EWHC 1936 (IPEC) |
| Docket Number | CLAIM NO: IP-2020-000085 |
| Court | Intellectual Property Enterprise Court |
[2021] EWHC 1936 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURTS OF ENGLAND & WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London EC4A 1NL
David Stone
(sitting as a Deputy High Court Judge)
CLAIM NO: IP-2020-000085
Mr David Ivison (instructed by Briffa) for the Claimants
Mr Nick Zweck (instructed by BBS Law Limited) for the Defendants
Hearing date: 25 June 2021
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
David Stone (sitting as a Deputy High Court Judge):
At the liability trial of this matter on 25 June 2021, I held that all four pleaded registered designs were infringed by two of the Defendants' outdoor light fittings. These are the reasons for my decision.
Background
By a claim form dated 14 August 2020, the First Claimant, Lutec (UK) Limited ( Lutec) and the Second Claimant, Ningbo Utec Electric Co Limited ( Ningbo) sued the First Defendant, Cascade Holdings Limited ( Cascade) and the Second Defendant, Forum Lighting Solutions Limited ( Forum) for infringement of two registered Community designs ( RCDs) numbered 000540927-0001 ( 0001) and 000540927-0002 ( 0002). The RCDs were filed on 5 June 2006 and each lists “exterior lights” as the product to which the designs are to be applied. Each RCD contains 4 images, which are shown here (images not shown to scale):
i) RCD 000540927-0001; and
ii) RCD 000540927-0002.
The claim alleged that 0001 was infringed by the Defendants' Helios Up Or Down light ( Helios U/D) and that 0002 was infringed by the Defendants' Up And Down light ( Helios U&D). The two allegedly infringing lights are shown here:
| Helios U/D | Helios U&D |
 |  |
The Defendants admit that they have sold the Helios U/D and the Helios U&D in the United Kingdom, but deny that such sales infringe the RCDs.
The claim was initially issued in this court, which was at that time a Community Design Court, under the Community Designs Regulation (EC) 06/2002. A CMC took place before HHJ Hacon on 25 January 2021, shortly after the United Kingdom left the EU-wide regime for design protection at 11pm on 31 December 2020 ( IP Completion Day), so the Court had ceased to be a Community Design Court. Lutec and Ningbo therefore sought permission from His Honour in a subsequent application to amend their claim expressly to assert reliance upon the RCD equivalents which came into being on IP Completion Day. Those new UK rights were given the numbers 90005409270001 and 90005409270002. As it is not necessary to distinguish between the RCDs and the equivalent UK rights, I will for ease refer to both each RCD and its UK equivalent as if they were one. I add for completeness that validity of the registered rights was not in issue before me.
Lutec and Ningbo also sought permission to add the proprietor of all four registered designs as a claimant in the proceedings. His Honour gave permission and thus Lampekonsulenten A/S ( Lampekonsulenten) became the Third Claimant.
As is usual in the IPEC, His Honour set out a list of issues to be determined at the liability trial, which by the time of the trial read as follows (I have updated some defined terms):
“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 trial was conducted remotely using Microsoft Teams. Mr David Ivison appeared for the Claimants. Mr Nick Zweck appeared for the Defendants. In addition to the images of the Helios U/D and the Helios U&D, I was provided with actual examples of both lights.
At the start of the trial, I dealt with two procedural matters. First, I dismissed, for the reasons I gave then, the Defendants' application dated 15 June 2021 for permission to adduce late a witness statement of Mr Andrew Higginson and for relief from sanctions. Second, I declined to hear, for the reasons I gave then, the Defendants' submissions concerning the licensing arrangements between Lampekonsulenten and Ningbo on the one hand, and between Ningbo and Lutec on the other.
Further, counsel for the Defendants had stated in his skeleton argument for this trial that the Defendants now accepted that the designer of the RCDs had a very considerable degree of design freedom. Issue 2 in the list of issues ordered by HHJ Hacon therefore also fell away, leaving only the questions for trial of (a) whether the Helios U/D infringes 0001 and (b) whether the Helios U&D infringes 0002.
The Law
The parties were agreed on the law to be applied to determine infringement.
Article 10 of the Design Regulation provides:
“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.”
In Dyson Limited v Vax Limited [2011] EWCA Civ 1206, Sir Robin Jacob, with whom Jackson and Black LJJ agreed, said this on 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:
“[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.””
The law on overall impression was considered in detail in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat) at paragraphs 169 to 182. Relying on the judgment of the General Court in Case T-525/13 H&M Hennes & Mauritz BV & Co KG v OHIM EU:T:2015:617; [2015] ECDR 20, HHJ Hacon (sitting as a Judge of the Patents Court) provided a convenient six stage summary at paragraphs 181 and 182:
“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.”
Interpretation of the RCDs
There was an issue between the parties as to what the images in the RCDs show, and therefore, what is “claimed” as part of the protected designs. The parties were agreed as to the law I should apply. As Lord Neuberger PSC said in Magmatic Limited v PMS International Group PLC [2016] UKSC 12 ( Trunki) 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...
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