Shades Of Grey? English Registered Pattern Police Only Nearly Constitutional

From BAILII the IPKat brings y'all a remarkable constitutional police pull instance involving pattern registration, Oakley Inc v Animal Ltd in addition to others [2005] EWHC 210 (Ch), a conclusion of Deputy Chancery Judge Peter Prescott QC, eighteen Feb 2005.

Oakley in addition to Animal were contender makers of designer sunglasses. Back inwards May 1996 Oakley sold sunglasses made according to their design, applying a calendar month after for registered pattern protection. Animal after brought out its ain competing product, next which Oakley sued for pattern infringement. Animal, relying on the prior publication provisions of the Registered Designs Act 1949, said Oakley's pattern was invalid because Oakley publishing its pattern earlier it applied to register it. Oakley admitted the prior publication but said it didn't thing since the currently applicable police pull of prior publication, nether EC Directive 98/71, provided a post-publication grace menstruation of 12 months for filing an application.

The UK, beingness required to implement the Directive into national police pull yesteryear 28 Oct 2001, had ii options amongst regard to the validity of the pattern regulations which were inwards forcefulness on that date. It could either adopt the police pull of validity prescribed yesteryear the Directive or it could hold its erstwhile national law. On nine Dec 2001, inwards reliance on s.2 of the European Communities Act 1972, the Great Britain enacted the Registered Design Regulations 2001, SI 2001/3949, which implemented effect to the Directive. By reg.12 the Great Britain purported to avail itself of the derogation,which enabled the validity of existing registrations to choke along to hold upwards governed yesteryear the 1949 Act. This favoured the seat of Animal.

Oakley maintained that, (i) if the alternative to derogate was to hold upwards exercised at all, it should select been done yesteryear Act of Parliament in addition to non yesteryear subordinate legislation made yesteryear the Executive, (ii) reg.12 was reverse to the constitution of the Great Britain in addition to thus ultra vires, (iii) if the alternative to derogate were to hold upwards exercised, it had to select been exercised yesteryear 28 Oct 2001, amongst the resultant that the purported practise of derogation was reverse to the police pull of the EU in addition to so ultra vires. The courtroom was asked to consider, every bit a preliminary point, infringement the validity of reg.12. This inwards plow depended on whether the Secretary of State had powerfulness to arrive in addition to the truthful structure of s.2 of the 1972 Act.

Specifically, ii issues for the determination of the courtroom were (i) whether a regime government minister or division could utilisation the powers nether s.2(2) to brand regulations that brought nearly a resultant that was non mandated yesteryear a European obligation and, if such a powerfulness existed, how far did it go, in addition to (ii) to what extent (if at all) mightiness a Member State avail itself of a derogation after the terminal engagement yesteryear when a directive was supposed to select transposed the directive into its internal police pull every bit a thing of urgency.

Peter Prescott QC upheld the validity of the subordinate legislation in addition to ruled inwards favour of Animal.

* Reg.12, every bit currently worded, would hold upwards ultra vires because the Secretary of State had no powerfulness nether s.2(2) of the European Communities Act to brand regulations that breached Community obligations. Parliament itself could do it, but only yesteryear expressly defying the 1972 Act or yesteryear repealing it. However, because of the doctrine of substantial severability, reg.12 took effect dependent area to the revision the courtroom adumbrated in addition to was thus valid.

* The combined effect of sections 2(2) in addition to 2(4) was to enable the Executive, inwards appropriate circumstances, to legislate amongst all the forcefulness of an Act of Parliament in addition to fifty-fifty to improve an existing or futurity Acts of Parliament. Thus s.2(2), combined amongst s.2(4), was an instance of what was known every bit a ‘King Henry VIII clause’, a powerfulness granted yesteryear Parliament to the Executive to brand subordinate legislation which itself counted every bit if it were primary legislation.

* The full general locomote of the 2001 Regulations to implement a Community obligation. However, reg.12 was non made for the locomote of fulfilling a Community obligation and, if anything, was for the opposite purpose.

* Section 2(2)(b) did non enable the Executive to brand secondary legislation, amongst the potential to improve or repeal fifty-fifty an Act of Parliament, in addition to to attain a resultant non required yesteryear a Community obligation, only because its locomote was inwards about means related to or arose out of that obligation. In short, if s.2(2) was given a narrow but purposive construction, every bit it had to be, it did non enable the attainment of a noun resultant that was required neither yesteryear the Community nor yesteryear Parliament itself.

* The effect of reg.12 was to retain the erstwhile (1949 Act) police pull of validity inwards honour of registrations inwards existence at the fourth dimension the Directive was implemented. Since this conclusion was a pregnant policy selection in addition to had to hold upwards implemented yesteryear primary legislation, the Secretary of State had no powerfulness to brand that conclusion in addition to to implement it yesteryear secondary legislation: such a legislative human activity would hold upwards ultra vires.

* The locomote of the secondary legislator inwards this province of affairs was to transpose a European directive. Even if he had exceeded his powers inwards 1 respect, such every bit yesteryear mistaking the truthful reach of the directive, or yesteryear legislating reverse to the directive, or yesteryear attempting to make a noun resultant required neither yesteryear the Community nor yesteryear Parliament, it would commonly hold upwards clear that the substantial locomote of the residue of the musical instrument was to implement a Community obligation. That beingness inwards whatever lawsuit compulsory, it would hold upwards foreign if the courtroom felt obliged to cutting downward the whole. It could instead delete the offending business office or fifty-fifty rewrite it in addition to then every bit to arrive accommodate to the directive.

* Whether the Great Britain was to avail itself of the derogation or non was clearly a pregnant policy choice. The powerfulness to brand that selection in addition to implement it inwards national police pull mightiness select lain amongst Parliament alone, or it mightiness select been available to the Secretary of State. But what was clear was that it did non prevarication amongst the courts. Were the courtroom to accede to Oakley's submissions, the resultant would hold upwards that the Great Britain would select a police pull of registered designs which, every bit regards the validity of existing regulations, was chosen neither yesteryear Parliament or (if that were relevant) the Secretary of State, nor required yesteryear the European Community. The 2001 Regulations purported to improve the text of the 1949 Act. That text was passed in addition to amended yesteryear Parliament, in addition to yesteryear Parliament alone. Thus Parliament enacted a detail legislative system which was to principle at to the lowest degree the validity of existing regulations.

* The somewhat paradoxical effect of this was that the erstwhile police pull of validity, every bit defined yesteryear the 1949 Act, continued to apply to existing registrations, because that was what Parliament provided, exactly every bit it would select continued to apply if, instead of purporting to adopt the derogation, the Secretary of State had purported to eschew it.

* As to Oakley's signal that, nether the directive, the existence of the alternative to practise the derogation disappeared on 28 Oct 2001 in addition to that, in 1 lawsuit the deadline had expired, the chance to practise the derogation had ceased to be every bit a thing of Community law, this was non acte claire. If Oakley wanted to press that point, the courtroom would bring upwards the inquiry to the European Court of Justice for a preliminary ruling.

Peter Prescott: has raised cardinal questions
relating to Great Britain implementation of European IP rules

marvels in 1 lawsuit once again on Peter Prescott's scholarship in addition to erudition (see his second judgment in Griggs v Evans for about other example). He is all the same quite surprised that this number has non been argued earlier in addition to he's also a picayune shocked at the plainly frail legal terra firma of existing Great Britain pattern law. Merpel says, if Parliament tin give the sack do what it wants in addition to the courts tin give the sack do what they want, why can't the misfortunate erstwhile Executive do what they desire too?"