In considering an invalidity application in the UK Design Registry, Mr Allan James found himself considering The Good, The Bad and The Ugly of poncho design. Following the stand off Zap Limited’s registered design was left standing as it was held to be new and of individual character.
Zap Limited (“Zap”) is the owner for a UK registered design for a poncho bearing decorative elements of the 2006 England football team strip. In January last year Mrs Walton applied to invalidate the registered design on the grounds that it was not new and had no individual character when compared to other known poncho designs.
Mrs Walton is the owner of two earlier UK registered designs and a Community registered design – all for ponchos without any surface decoration. She is also the owner of an unregistered design for a poncho based on the 2004 England football shirt. Zap had previously sold ponchos under a licence from Mrs Walton in relation to her registered designs. The ponchos sold under licence included one bearing features of an England football shirt which was sold in 2005. Mrs Walton claimed that the Zap design was also invalidated by the earlier disclosure of the 2006 England Football team strip at its launch and the disclosure by Zap to Mrs Walton of the ponchos sold under licence in 2005.
Considering the various registered designs through the eyes of an “informed user”, Mr James concluded that the Zap design does not create the same overall impression as the earlier registered designs. Mrs Walton earlier UK and Community registrations were simple rectangles with a “narrow transverse slit” for the user to place his or her head through. In contrast the Zap design is octagonal in shape and has a triangular hole for the neck. The absence of any surface decoration on Mrs Walton’s earlier designs was regarded by Mr James as irrelevant. It is not a “positive feature” of the design and the focus of the comparison must be the shape and contours of the respective designs.
Although the Zap design and Mrs Walton’s unregistered design are both ponchos bearing surface decoration relating to the England football kit, it was held that there are significant differences between the two. Mrs Walton’s design has a conventional shirt collar drawn onto it and thick red stripes across the arms and neckline of the poncho leading to the three lions badge in the centre. The Zap design has a single red cross over one shoulder and the three lions badge on the left hand side. These features would create a different overall impression on the average consumer of sports shirts.
With regard to the earlier disclosures, Mr James held that the launch of the 2006 England football team strip did not disclose how the football shirt would be applied to the ponchos and was therefore not novelty destroying. The second disclosure to Mrs Walton by Zap was held to be done in a condition of implied confidence.
The Zap design was held to be new and of individual character. Mrs Walton’s application failed.
The most notable aspect of the decision is Mr James’ conclusions on the issue of surface decoration. A registered design which is simply for the shape and contours of a product will cover all designs which utilise the same shape and contours, regardless of the addition of any surface decoration. To conclude otherwise would allow would-be infringers to circumvent designs simply by adding an element of surface decoration. However where the surface decoration is in itself a positive feature of the design this approach may prove problematic.