Mrs Walton is the proprietor of registered designs consisting of the shape of a poncho with no surface decoration. She also sold ponchos printed with a representation of the 2004 England strip.
Zap is the proprietor of a registered design which shows a representation of the 2006 England football strip as surface decoration.
Mrs Walton applied to have Zap’s registered design invalidated for lack of novelty and individual character under s.11ZA the Registered Designs Act 1949 (as repeatedly amended).
Mrs Walton’s case failed. The key reason why the design was not invalid when compared to the earlier registered designs was that, because of differences in shape between the two sets of designs, Zap’s design formed a different overall impression on the informed user from Mrs Walton’s earlier registered designs. However, Mr Hearing Officer James’ approach to surface decoration is worthy of note – vis, where an earlier design is registered without surface decoration, lack of surface decoration should not be taken as a positive feature of the earlier design, allowing the later design to form a different overall impression merely through the inclusion of surface decoration. Instead, the entire focus would be on comparing the designs’ respect shapes and contours.
Mrs Walton’s use of ponchos bearing the 2004 strip gave rise to an unregistered design right. However, Zap’s use of the 2006 strip meant that its registered design gave rise to a different overall impression on the eyes of the informed user since purchasers of ponchos decorated with football strips would be likely to notice the difference between the strips of different vintages. Indeed, the entire replica football shirt market rests on the assumption that consumers will concern themselves with the differences between shirts from different years.
Mrs Walton couldn’t raise an argument based on entitlement to the design of the 2006 strip since entitlement claims can only be raised by the alleged proprietor.
The IPKat reckons this pretty much makes sense – in particular, if a different approach was taken to surface decoration, it would be possible to evade many earlier designs by simply adding a degree of decoration. It still feels rather funny though to have two parties, neither of who are the FA, arguing about design rights in designs incorporating the England strip.
Email address change
All Patent Office email addresses are changing to @ipo.gov.uk from 2 April 2007, in line with the Patent Office name change. The IPKat says it’s a shame they’re not @uk-ipo.gov.uk, since UK-IPO appears to be the acronym of choice in the non-virtual world.