Registered Designs: The First Appeal to an Appointed Person in a Designs Case

Martin Howe QC Ahmet Erol v Sumaira Javaid BL O/253/17 12 June 2017

The Registered Designs Act 1949 was passed the same year as the Patents Act 1949. S.85 (2) of the Patents Act 1949 established a Patents Appeal Tribunal ("PAT") which heard appeals from hearing officers. There was a corresponding provision under s.28 of the Registered Designs Act 1949 which established a Registered Designs Appeal Tribunal ("RDAT"). The PAT was abolished by the Patents Act 1977 but the RDAT trundled on until the Intellectual Property Act 2014 came into force (see Jane Lambert How the Intellectual Property Act 2014 changes British Registered Design Law 19 June 2014 JD Supra). S.10 (4) of that Act repealed s.28 of the Registered Designs Act 1949 and with it the RDAT.  S.10 (2) of the 2014 Act inserted new sections 27A and 27B into the 1949 Act which gave those who wished to appeal against a decision of a hearing officer a choice between appealing to the Patents Court or "a person appointed by the Lord Chancellor" who is known as an “Appointed Person”.

This appeal by Ahmet Erol against the decision of Ms Judi Pike, who declared his British registered designs numbers 4019752 and 4019267 to be invalid in Ahmet Erol v Sumaira Javaid BL O/152/16 23 March 2016, was the first to an Appointed Person under the new procedure. It came on before Mr Martin Howe QC who edited the 9th edition of Russell-Clarke & Howe on Industrial Designs. In his judgment Mr Howe noted:

"Designs Appeals to an Appointed Person 
[2]  This is the first decision of an Appointed Person under the new appeal regime for designs created by the Intellectual Property Act 2014. 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 long standing system of appeals to an Appointed Person in trade mark appeals. 
[3]  Both the statutory provisions and the rules (The Appointed Person (Designs) Rules 2015, SI 2015 No 169) are closely modelled on the corresponding statutory provisions and rules relating to appeals in trade mark cases. 
[4]  In addition to the rules themselves, there is a large reservoir of practice and procedure which has built up on appeals to Appointed Persons in trade mark cases. 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."

The designs in suit appear above. Sumaira Javaid applied to invalidate the designs on the grounds that they lacked novelty and individual character as required by s.1B (1) of the Act. A lot of prior art was presented to the hearing officer most of which was rejected as irrelevant.  However, she did find two items to be relevant:
  • a photograph (said to have been from a photo shoot conducted by Global Fashion Links) which was placed on Facebook in 2010; and
  • witness statements from Nasar Ahmed and T. Piratheepan which said that garments bearing a Union flag design depicted in the witness statements had been on the market from 2005 or 2006.
Ms Pike compared the designs in suit with these two items of prior art and found that neither of them created a different overall impression on an informed user to that shown in the photo. Accordingly, she declared both registrations to be invalid.

Shortly before the appeal, the Appointed Person heard that the proceedings had been settled. He was presented with a consent order to set aside Ms Pike's decision and restore the invalidated designs to the register. Very properly, he declined to make an order in those terms explaining:

"The hearing officer’s decision that the designs are invalid is not simply a transaction between the parties to the proceedings. It is an official act under public law which affects the status of legal rights on the register and so affects the rights of the public at large. Accordingly, such a decision cannot be set aside on appeal, unless the appellate tribunal is satisfied on the merits of the appeal."

Mr Howe then received a letter from the respondent stating that the appellant had granted her “permission to sell these designs no 4019752 and 4019267 fully, without any restrictions and any time period”, and that she had no objection to the contested designs staying on the register.  That letter emphasized and reinforced "the strong public interest which exists in not permitting the reversal of a first instance decision to invalidate registered intellectual property rights except where that decision is shown to be wrong on the merits." Mr Howe added: 

"If the decision were to be reversed by consent in the way sought by the parties, the appellant and the respondent would be in a favoured club of traders free to operate within the scope of the monopoly rights which had been restored to the register and could then be asserted to exclude other traders from the market."

On appeal, the appellant applied to adduce a mass of new evidence much of which had been excluded by the hearing officer. He also challenged the evidence upon which she had relied on the ground that the photograph might have been forged and the witness statements were improperly drafted. The Appointed Person rejected both of those challenges.

At para [21] of her decision, the hearing officer characterized the design in front of her as follows:

“Scope of the registered designs 

[210. Mr Erol’s design application forms state that the products for which the design applications were made included t-shirts, hoodies (and umbrellas). The design was applied for as part of a multiple design application, which also includes hoodies and umbrellas. These are all different items. It is clear that the design the subject of these proceedings is a Union Jack flag applied to the top half of a garment. Secondly, the attachments to the counterstatements, intended to support Mr Erol’s claim to have originated the designs, show Union Jacks without depicting any garments. The tick/swoosh is present in the attachment to the counterstatement for 4019267, but not the letters NAS. The scope of the design registrations is therefore: 

4019752: a Union flag applied to the top half of a garment; 
4019267: a Union flag including a tick/swoosh applied to the top half of a garment. 

The letters NAS at the bottom of the jacket in 4019267 do not form part of the design, either as attached to the counterstatements, or in the scope of the design as applied for.” 

Mr Howe found at para [47] that Ms Pike's reference to the multiple design application and the other applications which had been included in it when there was no evidence of the nature of the application and her characterization of the scope of the design had led her into error.  She had learned that the application had been a multiple application by requesting sight of the application which, Mr Howe thought, she was entitled to do. However, having obtained that document she had a duty to make it available to the parties before seeking to rely upon it and that she did not appear to have done. In this case, the appellant had applied to register t-shirts, hoodies and umbrellas decorated with the Union flag from the same filing. Ms Pike seems to have characterized the design not as the design for an individual garment but as the design of "a garment of any shape, or a garment of any colour outside the top front area to which the Union flag is applied." 

As a result, Mr Howe concluded at para [65] that the comparison carried out by the hearing officer had been flawed. She had compared the prior art with her set of abstracted features from the two registered designs rather than with the registered designs themselves. That had led her to disregard ab initio a number of differences between the designs as registered and the prior art which should have been taken into account in assessing whether or not the same overall impression was produced even though, in the end, those differences did not turn out to be determinative.

Mr Howe, therefore, carried out the comparison between the registered designs and the prior art himself. In his view, both the designs in suit were new when compared with the prior art, that is to say, they were not identical and they differed in more than “immaterial details” as required by s.1B(2) of the Act). He then considered whether they had “individual character”, that is to say in each case whether “the overall impression it produces on the informed user differs from the overall impression produced on such a user” by the prior art as required by s,1B(3). Reminding himself of Judge Birss QC's guidance at paragraphs [31] to [33] of Judge Birss QC's judgment in Samsung Electronics (UK) Ltd v Apple Inc  [2013] ECDR 1, [2012] EWHC 1882 (Pat) considered each of the registered designs  from the standpoint of the informed user and concluded that neither produced a different overall impression from the prior art.  He, therefore, dismissed the appeals.

This first decision by an Appointed Person in a design case is important for the following reasons. First, Mr Howe asserted that there is a public interest in removing from the register designs that should not be there so it is not open to litigants to settle disputes on terms that might conflict with that public interest. Secondly, he reaffirmed the principles by which evidence may be admitted on appeal, particularly when such evidence is aimed at discrediting the other party rather than addressing an issue in the case. Thirdly, if a hearing officer relies on evidence that has not been produced by either party, he or she has a duty to place it before the parties before considering it. Fourthly, each individual design is to be considered individually even if was registered pursuant to a multiple application. A hearing officer is not entitled to abstract general characteristics from the designs that were also part of the same multiple application and compare those general characteristics with the prior art. Finally, the appointed person reminded us of the what to look for when considering novelty and individual character.

Anyone who wishes to discuss this case note or design law, in general, is welcome to call me on 020 7404 5252 during office hours or send me a message through my contact form.

Further Reading

Jane Lambert
Jane Lambert
Jane Lambert


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