Following the creation in 2014 of an alternative route of appeal in design cases, Martin Howe QC has just published the first decision of an Appointed Person in a case concerning the validity of two registered designs used on clothing.
New route of appeal
In 2014, a new system of appeals to an Appointed Person (AP) was created for registered design cases by the Intellectual Property Act 2014 (see our article here on the Act). It is an alternative to the route of appealing to the High Court in heavier and more complex cases, and is intended to mirror the longstanding system of appeals to an AP. In fact, the relevant rules for design appeals are closely modelled on the corresponding rules for trade mark cases.
Appointed Person's decision
On 18 May 2017, Martin Howe QC, issued the first decision of an AP in a designs case concerning the validity of two registered designs used on clothing (Appeal O/253/17). The case was an appeal from the hearing officer's decision which had found the designs, which both consisted of a garment on the chest of which a somewhat modified Union Jack flag was displayed, to be invalid.
The key argument for invalidating the designs was that suppliers working in the London souvenir market had been selling similar designs for many years prior to 2011 (the application date of the registered designs).
The AP rejected the design owners attempts to introduce additional material and confirmed that the hearing officer was entitled to treat a photograph on Facebook and the garment identified in two witness statements as forming part of the relevant prior art. The AP found that the hearing officer, in comparing the registered designs to the prior art, had incorrectly characterised the features of the designs in suit. However, once he had carried out the comparison himself, following the principles in Samsung v Apple  EWHC 1882 (Pat), the AP came to the same conclusion that the two registered designs lack individual character in the light of the prior art. As a result, he dismissed the appeal.
It is encouraging to see this alternative route for appeals being used in design cases, which provides litigants with a less complex, more informal and hopefully cheaper option than going to the High Court. It is clear from this decision that the AP in design cases will follow and apply the established practice and procedure that has been adopted in trade mark appeals unless there is a good reason not to, such as a difference in substantive designs and trade mark laws.
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