Erol v Javaid (Appeal 0/253/17) 18 May 2017: The first Registered Designs appeal to be heard by an Appointed Person
Registered Designs Act 1949 (as amended); Consolidated Proceedings; In the Matter of Registered Designs Nos. 4019752 and 4019267; In the Name of Ahmet Erol and Requests to Invalidate (Nos. 42/14 and 43/14); By Sumaira Javaid
Erol v Javaid (Appeal 0/253/17) Under the Intellectual Property Act 2014, a new route of appeals for designs was created. This new route mirrors that used in trade mark cases whereby instead of going through the traditional route of appealing via the High Court- in complex cases an Appointed Person (AP) can now hear an appeals case.
A request was made by Sumaira Javaid to invalidate two registered designs held by Ahmet Erol depicting a garment baring a Union Jack design on the basis that they lacked novelty or individual character under S1B(1) Registered Designs Act 1949 due to the fact that many store owners and suppliers in the London souvenir market had been selling similar designs for many years prior the application date of the aforementioned designs (2011).
UKRD No 4019752 UKRD No 4019267
The Hearing Officer (HO) only allowed two pieces of evidence presented by Ms Javaid- the first being a photograph placed on Facebook in 2010 showing an item of clothing bearing a design visually similar to the designs registered by Mr Erol. The second piece of evidence being witness statements stating that similar garments had been on the market from 2005/2006.
Witness Statement Facebook Photograph
By comparing the designs to the two pieces of evidence of prior art the HO held that the designs did not create a different overall impression and thus invalidated the two designs held by Mr Erol.
The HO did not allow a subsequent request from Ms Javaid to allow Mr Erol’s designs to remain on the register as he had now given her permission to sell these designs as a decision cannot be reversed by consent of the parties in this way.
Appointed Person’s decision
The AP first considered the application of addition evidence by Mr Erol. This evidence consisted of 27 exhibits to support Mr Erol’s contention that Ms Javiar was a ‘habitual liar and fabricates evidence in IPO proceeding on a regular basis’. However, the AP held that some of the additional evidence could not be introduced as they had been the subject of exclusion at a case management conference by the HO and only rarely would an appeal tribunal reverse such a discretionary case management decision. The rest were documents from before the date of the first instance hearing and Mr Erol had not given a reason why they were not relied on in good time or were only of indirect relevance. Nor would the AP allow the allegations of forgery of the evidence held to be prior art at first instance to be introduced on appeal as it was not cogent and there was no direct evidence contradicting the prior art evidence.
Secondly, the AP disagreed with the HO’s original finding on the scope of the registered design. The HO characterised the features of the design as being ‘a Union flag applied to the top half of a garment’ however the AP disagreed with this scope. Unlike a patent, a design registration relates only to the design as registered and cannot be ‘generalised’ and the comparison given was flawed as it compared not the design itself but only certain abstract features of the design.
The AP then went on to carry out a new comparison following the principles in Samsung v Apple  EWHC 1882 (Pat) and found that the registered designs gave the same overall impression as the prior art supplied by Ms Javiar despite differences he noted as being part of the design as registered.
In light of this the AP came to the same conclusion as the HO by holding that the registered designs remain invalid when applying this correct comparison test.
Many have argued for the implementation of an AP in design cases and so it is important to see that this has finally come to fruition. This is important for those who have a registered design as this alternative route for appeal. An appeal via an AP provides a simpler and most importantly a lower cost approach for litigants rather than going to the High Court.
Judgment Date: 23 MARCH 2016
First Appointed Person decision for designs comments on comparisons with prior art