The very first decision of an Appointed Person in a Registered Designs case has recently been handed down. An appeal to the Appointed Person represents a low cost route of appeal for parties to proceedings in the UK Intellectual Property Office (UKIPO) and has long been used in trade mark cases as an alternative to appealing to the High Court. This option has only more recently become available in designs cases and this decision by Martin Howe QC sitting as the Appointed Person is important because it confirms that, as far as possible, the procedures and practices that have been built up and used in appeals to the Appointed Person in trade mark cases will be adopted in designs cases.
The case involved two designs owned by Ahmet Erol for garments bearing a stylised Union Jack across the chest. Sumaira Javaid brought the action to invalidate these registered designs on the grounds that they lacked novelty or individual character under section 1B(1) of the Registered Designs Act 1949. Her submission was that such designs had been sold by many vendors on the London souvenirs market and that Erol “had not created the designs but instead had registered existing generic designs”.
Javaid (who was unrepresented in the proceedings, but whose husband assisted with interpretation) did not offer systematic evidence of earlier use of the designs, and most of the evidence she submitted was rejected by the Hearing Officer, Mrs Judi Pike, for either not showing a sufficiently similar design or not providing evidence that it had been made available to the public at the right time. However the Hearing Office gave weight to a Facebook photograph from 2010 (the year before the designs in question were registered) and two witness statements stating that similar garments had been on the market in 2005 and 2006. The Hearing Officer compared the garments with the prior art and decided that they did not create a different overall impression, thus rendering the designs invalid.
The appeal was made to the Appointed Person by Erol along with an application to submit additional evidence. The appeal was made on the grounds, inter alia, of “evidence of fabrication discovered subsequent to the hearing” (suggesting that the Facebook photograph had been faked) and that the Hearing Officer was mistaken to give weight to the evidence as she did.
The Appointed Person, Martin Howe QC, although he disagreed with the Hearing Officer on the methodology for reaching the conclusion, also said that the garments lacked individual character compared to available prior art and as such were invalid registered designs. He endorsed her case-management decisions and refused to allow Erol to submit further evidence (most of which he found to be dated before the hearing in any case) or ‘ventilate’ allegations of fraud. The appeal was dismissed.
Appointed Persons are designated by the Lord Chancellor to hear appeals from cases before hearing officers in the UKIPO. Before the Intellectual Property Act 2014 came into force, such appeals were reserved to trade mark cases but now people with registered designs who dislike the outcome of proceedings in the UKIPO can avail themselves of this cost-efficient appeals process – compared to appealing to the High Court in any case. The downside to this lower-cost route is that there is no further appeal – the decision of the Appointed Person is final.
It is clear that the Appointed Person appeals route is shaping up to follow a similar procedure to that for trade marks. As Howe said in his decision: “Unless there is a relevant difference between substantive designs law and trade mark law which justifies a different approach, or some other specific and concrete reason, the Appointed Persons for designs appeals will follow and apply the established practice and procedural decisions of the Appointed Persons in trade mark appeals.”
This is a very welcome confirmation although it is somewhat strange, given this similarity, that it has taken the better part of two years for the first decision to be made – it may well be that this route is not something that will see much use. However, it is an option that should be carefully considered by anyone involved in registered design proceedings in the UKIPO.
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