In William O’Connell (the “Applicant”) v Robert Scanlon (the “Proprietor”), the Hearing Officer acting for the Controller of the Irish Patents Office put himself into the shoes of the informed user and rejected an application for a declaration of invalidity in respect of a registered design (depicted below) for a “hat with a peak and with a ‘patchwork’ design’ (the “Design”).
By way of background, the Applicant had been threatened with infringement proceedings by the Proprietor if it sold hats of a similar or identical design to the Design. The Proprietor alleged that despite receiving a cease and desist letter, the Applicant proceeded to import hats into Ireland which infringed the Design. The Applicant then sought to invalidate the Design under sections 11, 12 and 13 of the Industrial Designs Act 2001 (the “Act”).
Section 11 – Novelty and individual character
Section 11 of the Act provides that a design must be new and have individual character to be registerable.
Section 12 – Novelty
Section 12 of the Act provides that a design shall be considered new where no design identical to it has been previously made available to the public before the filing date for registration or its priority date (where claimed). A design shall be deemed to be identical to a design which has been previously made available to the public where its features differ only in immaterial details.
The Applicant submitted over 300 images of hats from different websites’ advertisements which he argued showed images of hats which were identical, or differing only in immaterial detail, to the Design. He also submitted stills from the RTE television programme “Reeling in the Years” from 1989 which showed a man wearing a flat cap and also images of John Wayne wearing a flat cap.
The Proprietor alleged that none of the designs submitted by the Applicant was identical to the Design; in fact, such evidence merely demonstrated the many differing designs for flat caps which were available.
The Hearing Officer noted that the burden of proof rests with the Applicant to prove the disputed design is not new. He stated that the question of novelty is not determined by assessing whether or not all parts of a design are new but rather whether the whole design “has, or has not been seen before, or whether the design is so nearly identical to prior art that the only differences are in respect of immaterial detail”.
The Hearing Officer looked at the representations of the Design in its application for registration and stated that the Design is a “flat cap with a peak, consisting of a patchwork of different materials or fabrics, each being cut into what might be described as the shape of a parallelogram and arranged in a grid pattern on the main body of the cap”.
The Hearing Officer held that none of the images of the hats was nearly identical or differing in immaterial detail alone, to the Design. Accordingly, he held that the Design was new and did not offend Section 12 of the Act.
Section 13 – Individual Character
Section 13 of the Act provides that a design shall be deemed to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by a design which has been made available to the public before the filing date of the application for registration or, where priority is claimed, the date of priority. In assessing individual character the degree of freedom of the author of the design shall be taken into consideration.
The Hearing Officer noted that in order to determine this issue, he must put himself into the shoes of an informed user. He stated the “informed user must be considered to be someone who would have an average degree of exposure to flat caps of differing designs and would know something about the subject matter. The level of exposure would be sufficient to allow them to form an opinion, without the need to conduct a forensic examination, on whether or not their overall impression of the design is that it differs in character from other designs already known to them”.
He stated that he was satisfied that an informed user would notice the use of three different types of tweed material and the configuration of the pattern on the hat of the different types of tweed material. Further, he held that the tightening clasp at the back of the cap would attract the attention of the informed user. He found that not all of these noticeable features were repeated in any single design which had been put forward in evidence by the Applicant.
Accordingly, he held that the Design has a degree of individual character which sets it apart from designs already known to him. Therefore, the Design did not offend against section 13 of the Act.
Contributed by: Colette Brady
