NIPC Law

Author J onas Magnus Lystad   Licence CC BY-SA 4.0    Source Wikipedia Commons   Jane Lambert Chancery Division (Iain Purvis KC) Unicorn Studio Inc v Veronese SpAS    [2024] EWHC 1098 (Ch) (21 June 2024) This appeal highlights the importance of timely applications under CPR52.19 (4)  in appeals to the Court from the Trade Marks Registry. A party who wishes to appeal against a decision of a hearing officer has the choice under s.76 (2) of the Trade Marks Act 1994 of appealing to the Appointed Person or the Chancery Division of the High Court of Justice.  S.77 (1) defines an "Appointed Person" as a person appointed by the Lord Chancellor to hear appeals under the Trade Marks Act 1994.  Appointed persons tend to be senior members of the Intellectual Property Bar, solicitors specializing in that area of the law or distinguished academic lawyers. There are advantages and disadvantages of appealing to the Appointed Person rather than the Court....

C ontains public sector information licensed under the Open Government Licence v3.0 . Jane Lambert The CEO of the Intellectual Property Office, who is known as "the registrar" in trade mark proceedings pursuant to s.62 of the Trade Marks Act 1994, exercises judicial as well as executive functions.  He or she adjudicates disputes between applicants for trade marks and examiners known as ex parte proceedings. The registrar also decides disputes between applicants or registered proprietors and third parties that are known as  inter pates proceedings". The registrar's judicial functions are performed on his or her behalf by officials known as "hearing officers" though they are not mentioned in the legislation.  I discussed ex parte hearings in If the examiner says "no" - ex parte hearings in the Trade Marks Registry   in NIPC London on 10 Aug 2015 and inter partes hearings in Oppositions in the IPO's Trade Mark Registry   in the same publicati...

  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 r egistered 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 ...

Jane Lambert Appointed Person (Mr Martin Howe QC) Re Registered Design No 6045074, Lambretta Club Great Britain v Frankland BL 0-129-20 6 March 2020 This was an appeal to the Appointed Person by Mr Gavin Frankland against the decision of Mr Oliver Morris on behalf of the Comptroller-General of Patents, Designs and Trade Marks in  Re Registered Design No 6045074, Lambretta Club Great Britain v Frankland   BL 0-373-19  5 July 2019 declaring invalid the registration of Design Number 6045074 . The appeal was heard by Mr Martin Howe QC on 2 March 2020.  Mr Howe delivered his judgment dismissing the appeal on 6 March 2020 (see    Re Registered Design No 6045074, Lambretta Club Great Britain v Frankland BL 0-129-20 6 March 2020). Mr Frankland, who claims to be President of the British Lambretta Owners Association  and was once a member of the Lambretta Club Great Britain , applied to register the above device as a registered desi...

Jane Lambert 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 o...