The Intellectual Property Act 2014 introduced a new appeal regime for designs, the new system of appeal allows an appeal to an Appointed Person, as an alternative to the route of appealing to the High Court.
Last week Martin Howe QC issued the first decision of an Appointed Person in a registered design case (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.
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 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, the Hearing Officer concluded that those registered were invalid.Â
The decision was subsequently appealed to the Appointed Person 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 OfficerÂs 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 Appointed Person found that the Hearing OfficerÂs comparison of the designs in suit to the prior art had incorrectly characterised the features of the designs. Nonetheless, having carried out the comparison himself, the Appointed Person 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.