In Lutec v Cascade,(1) the Intellectual Property Enterprise Court (part of the High Court) has confirmed that the nature of the images used in a registered design can impact on the scope of protection conferred by the design registration.


The claimants (Lutec) were the proprietors of two registered Community designs (RCDs) for exterior lights. Each light was designed to have a flat back to enable attachment to a wall, with a half-moon curved front incorporating parallel lines across the top and bottom.(2) Lutec issued registered design infringement proceedings against the defendants (Cascade) claiming that two of Cascade's Helios-branded exterior lights, both of which had been sold in the United Kingdom, infringed the RCDs.

Impact of Brexit
The proceedings were ongoing at the end of the Brexit transition period. On 31 December 2020 (known for Brexit purposes as "IP completion day"), the RCDs no longer covered the United Kingdom and Lutec was obliged to make an application to the Court for permission to rely on its cloned UK equivalent rights. Permission was granted and the infringement proceedings continued, the Court making no distinction between the RCDs and the UK cloned rights for the purposes of its judgment. The only question for the Court to determine was whether the RCDs had been infringed.


Interpretation of RCDs
An issue arose between Lutec and Cascade as to what the images in the RCDs showed and therefore what was claimed as part of the protected designs. The consideration of this question is where the real interest in this judgment lies.

The Court accepted that the law to be applied was set out in the judgment of Lord Neuberger in the Supreme Court's decision in Magmatic Limited v PMS International Group PLC (known as the "Trunki" decision).(3) From that, it was clear that the correct approach to assessing what a registration claimed began with the proper interpretation of the design registration in issue and, in particular, of the images included in that registration. This was a question of fact for the court, and not one for the notional informed user or an expert.

In Lutec, the Court embarked on this interpretation exercise. It noted that both RCDs were line drawings, as opposed to computer-aided design (CAD) images or photographs. On the drawings, the space between the top and bottom parallel lines on the front curved surface of the light was blank. In contrast, this space on the Helios lights had a surface of multiple parallel ridges or grooves. Cascade argued that this was a difference between the RCDs and the two Helios products. Cascade urged the Court to interpret the RCDs so that the only surface decoration claimed in the design registration was the top and bottom parallel lines on the curved surface, meaning that the blank spaces between those lines were, in effect, a claim to an absence of surface decoration. If the Court accepted this argument, this would be a clear difference between the RCDs and the surface-ridged Helios products, giving them a different overall impression and resulting in a finding of no infringement.

The key question, therefore, was whether the line drawings in the RCDs claimed an absence of surface decoration. To assess this, the Court once again looked to the Trunki decision for guidance. Trunki differed from Lutec in that the registered design in issue in Trunki was a CAD image and not a line drawing. However, Lord Neuberger made a number of observations on the interpretation of images in registered designs generally, albeit on an obiter basis. In particular, he acknowledged that an absence of surface decoration can, as a matter of principle, be a feature of a registered design, saying that "simplicity or minimalism can notoriously be an aspect of a design, and it would be very curious if a design right registration system did not cater for it".(4) Lord Neuberger went on to say that whether absence of ornamentation is, in fact, a feature of a particular design must turn on the proper interpretation of the images on the registered design. Significantly, he commented:

Many line drawings simply show a physical shape . . . but while they can show colouring and decoration, they are generally less appropriate for that purpose than photographs or CAD images, which can easily show subtle shadings and contours, as well as decoration, such as colours and ornamentation. Accordingly, while each Community Registered Design image must be interpreted in its own context, a line drawing is much more likely to be interpreted as not excluding ornamentation than a CAD image.(5)

Lord Neuberger then went on to approve a quotation from an article to which he had referred earlier in his judgment, saying:

Basically, the broadest claims can be achieved by drawings showing only the contours of the design. In contrast, a photo specifies not only the shape, but the surface structure and the material as well, thereby narrowing the scope of protection accordingly.(6)

Relying on Trunki and related judicial authority, the Court in Lutec observed that "it will be a very unusual case indeed in which a line drawing in a registered design claims an absence of surface decoration".(7) The Court held that this was not such an unusual case. It interpreted the RCDs as being claims to shape only, showing only the lines, contours and overall shape of the exterior lights and not the colours, texture or materials of the products, or its ornamentation. The Court rejected Cascade's argument that the only ornamentation shown was the top and bottom parallel lines on the curved surface, such that the design otherwise claimed an absence of surface decoration. In the Court's view, those lines delineated only the different parts of the product.

The practical impact of this finding was that the scope of protection of the RCDs extended to lights both with and without surface decoration, meaning that the ridges on Cascade's lights could potentially fall within that scope of protection, resulting in design infringement.

Having interpreted the scope of the RCDs, the Court turned to the question of infringement – specifically, whether Cascade's products produced on the informed user a different overall impression from the RCDs. Approving the comments of Sir Robin Jacob in Dyson v Vax,(8) the Court agreed that this question is "straightforward" and rather than requiring "elaborate argument and evidence, some of which seems to touch upon metaphysics . . . what really matters is what the court can see with its own eyes".(9)

Applying the law on overall impression set out in Cantel v Arc,(10) the Court assessed the similarities and differences between the RCDs and the Helios lights. In the Court's view, the informed user would be most struck by the front curved light housing as that would be the feature most visible once the light was installed. In contrast, the box at the back of the lights would be seen by the informed user as of less importance. Taking into account all of the similarities and differences and "standing back",(11) the Court held that the Helios lights infringed the RCDs. In the Court's view, this finding was reinforced by a concession made by Cascade that the designer of the RCDs had had a considerable degree of design freedom, resulting in the RCDs being entitled to a correspondingly wide scope of protection.


In practical terms, this judgment is a reminder to designers to give careful consideration to the images used when applying for a registered design, as they will impact on the resulting scope of protection. The images used should always bring clarity to what is actually being claimed, failing which a court will have to interpret that. This could result in the scope of protection being restricted beyond that intended.

On perhaps a more positive note, the Court observed that "oft quoted, but rarely observed"(12) was Lord Justice Jacob's view(13) that "by and large it should be possible to decide a registered design case in a few hours". Lutec proved to be an exception. As a result of the "efficient and proportionate approach to the hearing"(14) by the parties and their advisers, the trial in this case was completed in just over an hour. This is good news for designers around costs and the consequent accessibility of the courts to enforce their design rights.

For further information on this topic please contact Gill Dennis at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.


(1) [2021] EWHC 1936 (IPEC).

(2) Images of the RCDs and the Helios products can be found in the judgment here.

(3) [2016] UKSC 12.

(4) Id at paragraph 44.

(5) Id at paragraph 46.

(6) Ibid.

(7) [2021] EWHC 1936 (IPEC) at paragraph 24.

(8) [2011] EWCA Civ 1206.

(9) [2021] EWHC 1936 (IPEC) at paragraph 13.

(10) [2018] EWHC 345 (Pat) at paragraphs 169 to 182.

(11) [2021] EWHC 1936 (IPEC) at paragraph 45.

(12) Id at paragraph 47.

(13) Expressed in Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936.

(14) [2021] EWHC 1936 (IPEC) at paragraph 47.