Appointed Person issues first appeal decision in a design case

Union Jack Kat

Readers with an interest in UK design law will remember that the Intellectual Property Act 2014 introduced a new appeal regime for designs. 

The system of appeals to an Appointed Person, as an alternative to the route of appealing to the High Court in heavier and more complex cases, was intended to mirror the longstanding system of appeals to an Appointed Person (AP) in trade mark appeals. In fact, the relevant rules for design appeals are modelled on those for trade mark cases.

Readers will also remember that Sir Richard Arnold had advocated the extension of the Appointed Person appeal route for registered designs instead of the appeal route to the Patents County Court, which was enacted but never brought into force in place of the Registered Designs Appeal Tribunal.

Now via Sir Richard Arnold comes the news that last week Martin Howe QC issued the first decision of an AP in a registered design (Appeal O/253/17).

The appeal concerned a request to invalidate two registered designs (both consisting of a garment on the chest of which a somewhat modified Union Jack flag) on the ground that they lacked novelty or individual character under section 1B(1) of the Registered Designs Act 1949, as amended. 

Valid design?

The argument was that similar designs have been sold in the London souvenir market for many years prior to the application dates for the concerned designs and, as a result, their owner "had registered existing generic designs, hijacking the London souvenir market." 

Despite the lack of systematic evidence, the Hearing Officer relied on two (a photograph published on Facebook and two witness statements) of the many items produced to conclude that - on the balance of probabilities - these had been made available to the public prior to the concerned designs. Following a comparison of the designs at hand, she concluded that those registered were invalid.  

The decision was appealed to the AP together with a request to introduce additional materials, as well as allegation of fraud and forgery against the publication date of the Facebook photograph. 

Martin Howe QC dismissed such requests, and upheld the Hearing Officer’s findings on the evidence that the Facebook photograph and the garment identified in the two witness statements were prior art as against the two registered designs in suit. 

However, the AP found that the Hearing Officer’s comparison of the designs in suit to the prior art had incorrectly characterised the features of the designs in suit. Nonetheless, having carried out the comparison myself, the AP came to the same conclusion that the two registered designs lack individual character in the light of the above prior art. As a result, he dismissed the appeal.