We have now had the first decision by the Appointed Person in relation to a UK IPO decision concerning a UK registered design. For many years, the Appointed Person has been a speedier, less intimidating and more cost-effective alternative to the High Court as a route to appeal in trade mark cases. However, it wasn’t until the Intellectual Property Act 2014 came into force that this route of appeal became available in registered designs cases.
It is clear from the Appointed Person’s decision that this first registered designs appeal concerned a particularly colourful and acrimonious case, with the parties making accusations of falsification of evidence and poor conduct in the proceedings. The appeal was instigated by the owner of two registered designs held by the UK IPO at first instance to be invalid on the basis that the registered designs lacked the necessary ‘individual character’ to qualify for registration. Whilst the Appointed Person found an error in the UK IPO Hearing Officer’s assessment which allowed him to look at the substance of the matter again himself, ultimately the appeal failed. On his own review, the Appointed Person still found lack of individual character and consequently upheld the finding of invalidity in relation to both design registrations.
The Appointed Person is an attractive and well-used tribunal for trade mark appeals. By way of illustration, in the year ending 31st March 2017, there were 57 appeals against registry trade mark decisions, of which 52 came before the Appointed Person and just five went to the High Court. It is likely to prove equally attractive to parties appealing designs cases, although the volume of cases will likely be lower than for trade marks, given the smaller number of UK registered designs.