Shining a Light on Evidence at the UK IPO

With Brexit approaching and companies insuring against the uncertainty that brings there has been a steady uptick in registered design filings over the last three years.  This may ultimately lead to more infringement and validity cases making their way through the courts in the UK, including at the UK IPO.  While this case, UKIPO Decision O/571/19, may not be directly affected by Brexit, it does show some UK-EU contention (as well as a lesson in how not to invalidate your own design rights!).

The UK registered design relevant to this case provides a single colour image of a solar LED torch that has three sections, with the top section having a decorative frame from inside which light is emitted.  An application for invalidity was filed by a party based on a European Registered Community Design (RCD) they owned and filed 11 months before the UK registered design was filed.

The RCD is very similar to the top section of the torch of the UK registered design since it has a very similar decorative frame.  However, the hearing officer never needed to carry out a comparison between the designs since the owner of the UK design presented evidence in the form of a bill of lading and invoices that they had been importing the products since May 2017 and that the RCD was a copy of their UK design.  The evidence may or may not have proved the alleged copying; it did however prove that the UK design was publically disclosed 14 months before the design registration was filed, meaning the design owner’s own evidence rendered the UK design invalid.

When filing designs it can, from time to time, be useful to rely on the 12-month grace period for discounting your own disclosures that exists in the UK and Europe.  It can also be useful to try to discount any alleged prior art, though it is generally not recommended practice to invalidate your own design in the process.  Care therefore should be taken as to when to file a design relative to disclosures, especially if you are planning on extending your design protection outside of the UK and Europe.