Beware of the prior art – invalidation of a registered design owned by Making Man Trading Ltd

Trainee Solicitor, Tom Griffin looks into the case regarding the registered design owned by Making Man Trading Ltd.

On 9 November 2023, the UK Intellectual Property Office decided that a registered design owned by Making Man Trading Ltd should be declared invalid.

The proceedings concerned a registered design owned by Making Man Trading Ltd (the “Proprietor”) in the United Kingdom. The design consisted of, amongst other features, a pink rectangle with rounded corners and eight hollow moulds arranged in two rows of four (the “Design”) and was classified in Class 7 (Household Goods, not elsewhere specified), Subclass 2 (Cooking Appliances, not elsewhere specified) of the Locarno Classification.

Uljana Ltd (the “Applicant”) sought to invalidate the Design on the basis that it did not meet the requirements of section 1B Registered Designs Act 1949, namely that:

• it is not new (that is to say that an identical design or a design whose features differ only in immaterial details has been made available to the public); and
• it does not have individual character (i.e. the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public).

For the purpose of the above provisions, the “relevant date” by which those tests are measured is the date of the application to register the design – in this matter, 18 February 2022.

The Applicant provided documentary evidence of earlier, similar designs in the form of images from Amazon and eBay, which showed products with those similar designs being offered for sale on 4 February 2020 and 2 April 2020 respectively.

As a defence, the Proprietor put forward two points, both of which were erroneous.

• First, it sought to rely on the fact that the Design was approved by the UK Intellectual Property Office. However, as the UK Intellectual Property Office does not examine design applications on the basis of novelty, the function of invalidation process is to enable third parties to challenge validity. Therefore, the fact that a design is registered is not in itself a defence against such a challenge.
• Secondly, it stated that the Applicant had not shown it is the right holder of those earlier, similar designs. However, it was highlighted that it is not a requirement that the applicant is the right holder of the contested design. It is open to anyone to make such an application.

The judgment goes on to note that the design of the product listed on eBay and identified by the Applicant was identical to the Design; whilst the only discernible difference between the design listed on Amazon and the Design was the precise shade of pink – and this was an immaterial detail. It went on to conclude, therefore, that the Design lacked novelty.

This matter highlights the importance to owners of understanding the limits to the value of a registered design where no due diligence has been undertaken to establish whether and, if so, to what degree it is new – particularly if you are intending to rely upon it as a capital asset in connection with, say, raising funds.

A further interesting feature of this matter is that only one useable view of the earlier designs were provided, which showed one side of a mould. The matter of Framery Oy v European Union Intellectual Property Office, Case T-373/20 was relied upon to allow the remaining features on the reverse of the moulds to be inferred. The judgment in that matter was given after the end of the Brexit transition period yet was still deemed to have persuasive value, which serves as a reminder to remain alert to decisions of the EU Intellectual Property Office.

If you any queries relating to registered design subsistence, infringement or invalidity, please contact a member of our intellectual property department on 0161 832 3434.