Registered Designs - BVG Group Limited v Magee

 

Jane Lambert

Appointed Person (Mr Martin Howe QC) BVG  Group Ltd, v Magee  O-222-20 6 Oct 2020

This was an appeal to the Appointed Person by Mr Peter Magee against the decision of Mr Mark King to declare invalid registered design number 4009288 invalid (see BVG Group Ltd. v Magee O/713/19 22 Nov 2019).

The hearing officer held that the design did not satisfy section 1C (1) of the Registered Designs Act 1949 in that its features were dictated solely by the product’s technical function.  Mr Magee appealed against that decision on two grounds:

“1.1. The Hearing Officer failed to consider various features of the appearance of the design. He failed to consider whether those features of the appearance of the design had a technical function, and failed to consider whether those features had an appearance that was solely dictated by their technical function. 

1.2. Further, having conducted an analysis that led him to conclude that the features of the design that were examined had a technical function, the Hearing Officer failed to consider whether the appearance of those features was solely dictated by their technical function.”

The appeal came on before Mr Martin Howe QC sitting as "the Appointed Person" who considered the case on the papers.  He dismissed the appeal on 9 April 2020 but his decision appeared on the Intellectual Property Office's website only on 6 Oct 2020.

Mr Howe took the second point shortly.  He could find nothing in the hearing officer's decision to support Mr Magee's contention.  Mr Howe dismissed it at paragraph [31] of his decision.

The second ground of appeal was supported by a detailed list of features of the design which Mr Magee complained that the hearing officer had failed to consider.  The respondent, BVG Group Ltd. complained that none of those points had been made to the hearing officer at first instance.   Mr Howe agreed:

"The proprietor was clearly on notice of the applicant’s case (and evidence) that none of the features of the registered design served a nontechnical purpose. If his case was that certain specific features of the design did in fact serve a non-technical purpose as well as or instead of a technical purpose, in my view he should have identified those features in the proceedings at first instance so that the Hearing Officer could have given specific consideration to them. Raising these points for the first time on appeal undermines the proper function of the appeal process which is to review the correctness of the first instance decision, not to rehear the case de novo."

However, he did not dispose of the appeal on procedural grounds alone.  

The design was for a display unit for potted plants. Mr Magee had contended that s that a user of the goods would be less concerned about the function of the design and more concerned that it can present plants in an attractive way. Mr Howe accepted that that might well be true but it was beside the point. He was concerned with whether or not the appearance of the unit itself was designed to be attractive. As he added at [37], resenting plants loaded onto it in an attractive way is part of the technical function of the unit, not an aspect of its own appearance.  He considered each of the features on which Mr Magee relied and found each of them to be determined by a technical function.

In addition to considering each of those points in isolation, he looked at the design as a whole.   He concluded at [40] that there was nothing in those points to displace the impression gained from looking at the design of the unit as a whole as shown in the representations which appear above that, "however useful or possibly ingenious it might be as a functional design, non-technical considerations played no part in its creation."

The Appointed Person noted that costs in proceedings before the Intellectual Property Office tribunals are usually awarded on a fixed scale.   Paragraph 6 of the Tribunal Practice Notice 2/2000 states:

"It is the long-established practise that costs in proceedings before the Comptroller are awarded after consideration of guidance given by a standard published scale and are not intended to compensate parties for the expense to which they may have been put. Rather, an award of costs is intended to represent only a contribution to that expense."

However, paragraph the TPN allows the tribunal to depart from the scale in certain circumstances:

"8. Users' comments taken as a whole supported the general thrust of the present policy based upon fixed reasonable costs, provided that there is the flexibility to award costs off the scale where the circumstances warrant it. The Office also believes this is the way to proceed, since it provides a low cost tribunal for all litigants, but especially unrepresented ones and SMEs, and builds in a degree of predictability as to how much proceedings before the Comptroller, if conscientiously handled by the party, may cost them. The present policy of generally awarding costs informed by guidance drawn from a scale will therefore be retained. However, the Office envisages the necessary flexibility as going beyond the criterion of "without a genuine belief that there is an issue to be tried" developed in the Rizla case. It is vital that the Comptroller has the ability to award costs off the scale, approaching full compensation, to deal proportionately with wider breaches of rules, delaying tactics or other unreasonable behaviour. The fact that this flexibility and the Comptroller's willingness to exercise it in suitable cases has been the subject of consultation and publicity means that there will have been "an established yardstick" underpinning a change in the previous practice.

9. It would be impossible to indicate all of the circumstances in which a Hearing Officer could or should depart from the scale of costs; indeed it would be wrong to attempt to fetter his or her discretion is such a way. The overriding factor is to act judicially in all the facts of a case. That said, it is possible to conceive of examples. A party seeking an amendment to its statement of case which, if granted, would cause the other side to have to amend its statement or would lead to the filing of further evidence, might expect to incur a costs penalty if the amendment had clearly been avoidable. In another example, the costs associated with evidence filed in respect of grounds which are in the event not pursued at the main or substantive hearing might lead to award which departs from the scale. Costs may also be affected if a losing party unreasonably rejected efforts to settle a dispute before an action was launched or a hearing held, or unreasonably declined the opportunity of an appropriate form of Alternative Dispute Resolution (ADR). A party’s unnotified failure to attend a hearing would also be a relevant factor."

BVG Group contended that  Mr Magee had failed to file evidence at first instance, and raised his list of detailed points for the first time on appeal after combing through the decision to identify design features which are not mentioned in it. The company submitted that the appeal lacked any merit, made unsubstantiated allegations about the competence of the hearing officer and should be dismissed with an award of costs “which reflects its unreasonably speculative nature.”  Mr Howe was minded to agree with the submission subject to Mr Magee's representations on the point and directed each of the parties to file submissions on the appropriate order for costs.

Although it was probably unnecessary for his decision Mr Howe discussed in detail the authorities on the constriction of s.1C (1) of the Registered Designs Act 1949 and s.1 (3) of the Act as originally enacted.  This Act has been subject to two major overhauls since I have been at the IP bar.   The first time was in 1989 when the Copyright, Designs and Patents Act 1988 came into force (see Part IV  and Sched 3 and Sched 4 to the Act as enacted).  The second was in 2001 when the Registered Designs Regulations 2001 implemented Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs  OJ L 289, 28/10/1998 P. 28 - 35.  Mr Howe's decision is worth reading  for that review of the case law alone,

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