Design for 'patchwork' hat held to be valid


In O’Connell v Scanlon, the hearing officer, acting for the controller, has rejected an application for a declaration of invalidity of an industrial design representing a hat.

On January 15 2014 Robert Scanlon, of Allied Imports Limited (the proprietor), sought to register the following industrial design, entitled “a hat with a peak and with a ‘patchwork’ design”:

The design was registered in Class 2, Sub Class 03 in respect of “headwear, hats”.

On September 1 2014 William O’Connell, director of Enterprise Asia JH Limited (the applicant), applied for a declaration of invalidity of the registration on the grounds that the design was not new and did not have individual character.

The proprietor denied all grounds of invalidity. It claimed that, while the applicant had submitted many different images of caps, none of them were identical to the design. In fact, these images proved that many differing designs of flat caps were available on the market.

In rejecting the application for a declaration of invalidity, the hearing officer acknowledged that:

the question of novelty is not to be determined by whether or not all parts of a design are new, but on whether the whole design has, or has not been seen before, or whether the design is so nearly identical to prior art that the only differences are in respect of immaterial details”.

He was of the view that none of the hats submitted by the applicant, on whom the burden of proof was placed, were identical or nearly identical to the design. He therefore dismissed the application for a declaration of Invalidity on that ground.

He also stated that, for determining the question of individual character, the hearing officer must put himself “in the shoes of an informed user”. In this particular case, the informed user was considered to be:

someone who would have an average degree of exposure to flat caps of differing designs and would know something about the subject matter. The level of exposure would be sufficient to allow them to form an opinion, without the need to conduct a forensic examination, on whether or not their overall impression of the design is that it differs in character from other designs already known to them.”

The hearing officer was satisfied that the informed user would notice the use of three different types of tweed material and their placement on the flat cap, as well as the clasp mechanism for tightening and loosening the cap. He was also of the view that the peak of the cap would not go unnoticed by the informed user. As none of these features were found in the other images submitted by the applicant, the hearing officer concluded that they were “not typically found on patchwork flat caps”.

Accordingly, the hearing officer was of the view that there were "a number of noticeable features in the design which were not all repeated on any single design the applicant had brought to [his] attention”. He found therefore that the design had a degree of individual character that set it apart from other designs already known to the informed user.

He therefore also rejected the application for a declaration of invalidity on this ground and allowed the design to remain on the register.

Ciaran O’Neill, DFMG Solicitors, Dublin

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