Where is the line for prior art and registered designs?
The UK's IP Enterprise Court (IPEC) has recently been pondering existential questions relating to design rights. The case is Erol v Posh Fashion Ltd  EWHC 195 (IPEC).
Erol alleged infringement of two registered designs for a hoody and a T-shirt (see below). However, Recorder Douglas Campbell QC concluded that two registered designs were invalid
The designs featured a legend comprising the words London and England and the Union Flag and were registered in 2011 (pictured).
The defence put forward three items of prior art, the earliest was a brochure produced by Urban Attitude dating from 1999 (pictured below). The judge had to determine if these invalidated the design rights.
Lack of individual character
In the case of the 1999 brochure and the hoody design, he found that:
the legend was identical
the brochure expressly indicated a hoody
the colour made no difference “since the colours are all unexceptional”
even if the design was novel over the brochure, it must lack individual character with respect to it “since the overall impression in both cases is the same”.
The only question was whether the 1999 brochure did indeed date from 1999. Despite the claimant’s arguments that it was forged, the judge found that it was genuine and therefore invalidated the design.
The judge also said that the hoody design was invalid based on the claimant’s own product dating from 2008, known as Lambert Souvenirs.
The judge reached substantially the same conclusion regarding the T-shirt design, and did not decide the question whether the defendant’s garments produced on the informed user an overall impression different from the registered designs.
Evidence, not sympathy
The claimant, a souvenir trader, represented himself in court and argued that such traders are suffering from high rents and the impact of the pandemic. The judge said “it was impossible not to feel sympathy for traders in this position” but added that he had to focus on the evidence in the case.
Businesses facing difficulties may think that launching an action for IP infringement can offer a solution to their problems. But this case demonstrates that you need solid arguments and evidence – and without them, there is the risk of your infringement action backfiring.