UK Appointed Person gives first decision in registered design appeal

The first decision on an appeal to the Appointed Person under a new regime for designs has been issued. The appeal in this first case was against a decision by a hearing officer for the IPO to invalidate two registered designs consisting of a garment with a modified Union flag on the chest, in response to a request from a competitor of the rights owner.

The UK Intellectual Property Act 2014 established the right to appeal decisions of the Intellectual Property Office (IPO) in relation to designs to an Appointed Person, as an alternative to appealing to the High Court. The Appointed Person is a senior lawyer who is an expert in intellectual property law, and the UK government has suggested that appeals to the Appointed Person will be settled more cheaply and quickly than appeals to the High Court. This route of appeal has existed for a long time for trade mark cases, and the established practice and procedure from trade mark appeals will be applied by the Appointed Person, unless there is a relevant difference between substantive designs law and trade mark law.

In the appeal against a decision, regarding a garment with a modified Union flag on the chest, the request to invalidate the designs was made on the grounds that they lacked novelty or individual character because similar designs had been sold in the London souvenir market for many years prior to the application date of the designs. Systematic evidence of pre-application use of the design was not provided. Instead, the complainant relied upon a large number of individual items, which the hearing officer narrowed down to two that she found on the balance of probabilities were relevant items of prior art that had been made available to the public. These items were a photograph placed on Facebook in 2010, from a photo shoot featuring a hoodie with a Union flag on the chest, and witness statements, which said that garments bearing a Union flag design had been on the market from 2005 or 2006.

The Appointed Person, Martin Howe QC, agreed with the hearing officer’s findings in admitting these items of prior art but found flaws in her comparison of them with the registered designs, as she had compared the prior art items only against certain features abstracted from the registered designs, rather than taking into account the whole design shown in the representations of the design. The Appointed Person conducted his own comparison and came to the same conclusion as the hearing officer: that the two registered designs did not create a different overall impression from the items of prior art.

The Appointed Person dismissed the appeal and upheld the hearing officer’s finding that the two registered designs did lack individual character in light of the prior art and should be invalidated. The Appointed Person also dismissed requests by the rights holder to introduce voluminous additional new materials into the appeal and his attempt to raise on appeal a new allegation of fraud and forgery against the publication date of the Facebook photo relied upon as evidence of prior art.

Case: IPO: Erol, O-253-17, 18 May 2017.

By Noirin McFadden

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