England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Strand London WC2
		29 September 2003

1. SIR ROBIN JACOB: This appeal to the Registered Designs Appeal Tribunal begins with an odd point. The applicant, Mr Sloggett, acted in person when he applied for his registration. He provided inadequate pictures, in the view of the Registrar, who in the end (after an attempt at better pictures) suggested that he send in a sample. The Registrar accepted a design registration with the following Statement of Novelty:

"The feature of design for which novelty is claimed are the shape, configuration and pattern of the surface of the article as shown in the representations and specimen."

But by the time the Registrar has accepted that registration, he had returned the specimen. It followed that anybody who came to inspect the Register could not understand this Statement of Novelty properly.

2. Moreover the pictures, although once one has got the specimen, are fairly obviously of the specimen, are difficult to comprehend without it. It is not the kind of article which readily photographs and in any event the photographs are not of the best quality.
3. So the proceedings below and the proceedings before me on the last occasion proceeded without the specimen actually in play. When I discovered that there was no specimen available, it appeared to me that there was something wrong. I have sought the assistance of the Registrar, who accepts that, given the Statement of Novelty that there is, this is a case in which the specimen ought not to have been returned. I was told that the Registrar has a practice, particularly with applicants in person, of asking for specimens in order to advise the applicant whether or not photographs would be a better way of representing the design than what, in such circumstances, are inadequate drawings.
4. In other cases the Registrar does accept a sample of the article on the Register. Plainly any Statement of Novelty which refers to a specimen would be unsatisfactory unless there is a specimen available for inspection on the Register.
5. The Registrar, in my judgment, ought to be careful about calling for specimens in order to see whether they adequately are shown in any representations. That to my mind is the wrong way round. If the representations are not, in the Registrar's view, adequate as they stand to tell the public what the design is, then the better course would be either to call for a sample, where that is practicable, so that it forms part of the material available for inspection, or simply to say to the applicant, 'These pictures are not good enough, you must provide better pictures'. The intermediate practice of looking at drawings which seem inadequate and comparing them with an article which is then returned to the applicant for registration seems to me to be in principle undesirable.
6. In this case the evidence from Mr Sloggett is that he intended in fact the sample to go on to the Register, and so much appears from the Statement of Novelty which he provided and was granted.
7. Accordingly the sensible thing to do is to put the sample back on the Register so that it is available for inspection by the public. I have asked all three counsel, namely for the appellant Hadley Industries, Mr Sloggett and the Registrar, whether I have power to make such a direction. They are all agreed that I do, arising from the combination of section 11 of the Registered Designs Act 1949, section 28 of the same Act and rules 17 and 50. In those circumstances, I propose to direct that the sample be placed on the Register and made available for public inspection and to hear what should be done on this appeal.
PART PROCEEDINGS

MR JUSTICE JACOB: …no, no. I am not complaining. I am going to go further and suggest that now Mr Sloggett has got the assistance of Mr Musker, I do not know whether he is going to continue acting pro bono, maybe not. He has acted pro bono on this one, and Mr Sloggett may have seen the value of that for a little bit, but just a little bit of advice on settlement might be quite helpful.

MR MUSKER: My Lord.

MR JUSTICE JACOB: Mr Musker, one other thing before I go. I am extremely grateful for your assistance. It is the first time any patent agent has appeared pro bono in this tribunal. I suspect possibly the patents county court too. I hope you found it a valuable experience yourself, sometimes one does, and may it continue in this sort of case. I do not mean in cases where the litigant cannot afford legal services, perhaps someone unbalanced, but a reasonable litigant who needs help in a technical area of law, to have the assistance of someone like you is really very special. Thank you very much indeed.

MR MUSKER: Thank you, my Lord.