Oakley Inc v Animal Ltd & Ors [2005] EWHC 210 (Ch) (17 February 2005)

Oakley Inc v Animal Ltd & Ors [2005] EWHC 210 (Ch) (17 February 2005)

Regulation 12 of the Registered Designs Regulations 2001 is ultra vires because the Secretary of State did not have the power under section 2(2) of the European Communities Act 1972 to exercise the derogation in Article 11.8 of Directive 98/71/EC after the implementation deadline, and such a significant policy choice should have been made by Parliament, not by subordinate legislation. The regulation was not required by the Directive and was not validly made.

Citation
[2005] EWHC 210 (Ch)
Parties
Claimant: Oakley Inc; Defendant: Animal Limited; Defendant: H Young Holdings PLC; Defendant: H Young (Operations) Limited; Intervener: Secretary of State for Trade and Industry
Jurisdiction
England and Wales
Judgment Date
17 February 2005
Procedural Posture
Civil Intellectual Property / Trial of Preliminary Point of Law
Outcome
Regulation 12 of the Registered Designs Regulations 2001 declared ultra vires and invalid.
Legal Topics
Registered Designs, Ultra Vires Subordinate Legislation, Implementation of EU Directives, King Henry VIII Clauses, Validity of Regulations, Prior Publication, Grace Periods for Design Registration
Intellectual Property Law Constitutional Law European Union Law Registered Designs Ultra Vires Subordinate Legislation Implementation of EU Directives King Henry VIII Clauses Validity of Regulations +2 more

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Parties

Oakley Inc

Claimant

Animal Limited

Defendant

H Young Holdings PLC

Defendant

H Young (Operations) Limited

Defendant

Secretary of State for Trade and Industry

Intervener

Procedural Posture

Civil Intellectual Property / Trial of Preliminary Point of Law

Legal Issues

  1. 1 Whether Regulation 12 of the Registered Designs Regulations 2001 is ultra vires for purporting to deny the 12-month grace period for prior publication to existing registrations, when such derogation was not mandated by the Directive and was exercised by the Secretary of State rather than Parliament;
  2. 2 Whether the derogation in Article 11.8 of Directive 98/71/EC could be exercised after the implementation deadline;
  3. 3 Whether the Secretary of State had the power under section 2(2) of the European Communities Act 1972 to make such a regulation.

Ratio Decidendi

Regulation 12 of the Registered Designs Regulations 2001 is ultra vires because the Secretary of State did not have the power under section 2(2) of the European Communities Act 1972 to exercise the derogation in Article 11.8 of Directive 98/71/EC after the implementation deadline, and such a significant policy choice should have been made by Parliament, not by subordinate legislation. The regulation was not required by the Directive and was not validly made.

Court Disposition

Regulation 12 of the Registered Designs Regulations 2001 declared ultra vires and invalid.

Orders

  • The 12-month grace period for prior publication applies to the Oakley registration.
  • The registration is not invalid for prior publication under the applicable law.