Oakley Inc v Animal Ltd. & Ors [2005] EWHC 419 (Patents) (16 March 2005)

Oakley Inc v Animal Ltd. & Ors [2005] EWHC 419 (Patents) (16 March 2005)

Regulation 12 of the Registered Designs Regulations 2001 was ultra vires if and to the extent it purported to apply the old law to design registrations applied for after 28 October 2001, as this was contrary to Directive 98/71/EC. The grace period would apply to Oakley only if the ECJ ruled in their favour. Regulation 12 was severable from the rest of the 2001 Regulations.

Citation
[2005] EWHC 419 (Patents)
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
16 March 2005
Procedural Posture
Civil Intellectual Property / Judgment on Preliminary Point of Law; Referral to ECJ
Outcome
Preliminary point decided in favour of Animal; reference to ECJ for preliminary ruling; permission to appeal granted on constitutional issue.
Legal Topics
Registered Designs, Ultra Vires, Implementation of EU Directives, Grace Periods, Severability of Legislation
Intellectual Property Law Constitutional Law European Union Law Registered Designs Ultra Vires Implementation of EU Directives Grace Periods Severability of Legislation

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 6 Party arguments 2
Sign in to unlock

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 / Judgment on Preliminary Point of Law; Referral to ECJ

Legal Issues

  1. 1 Whether Regulation 12 of the Registered Designs Regulations 2001 was ultra vires
  2. 2 Whether the 12-month grace period applied to Oakley's registered design
  3. 3 Whether the UK could lawfully adopt the derogation in Article 11.8 of Directive 98/71/EC after the transposition deadline

Ratio Decidendi

Regulation 12 of the Registered Designs Regulations 2001 was ultra vires if and to the extent it purported to apply the old law to design registrations applied for after 28 October 2001, as this was contrary to Directive 98/71/EC. The grace period would apply to Oakley only if the ECJ ruled in their favour. Regulation 12 was severable from the rest of the 2001 Regulations.

Court Disposition

Preliminary point decided in favour of Animal; reference to ECJ for preliminary ruling; permission to appeal granted on constitutional issue.

Orders

  • Secretary of State for Trade and Industry joined as party for purpose of appeal.
  • Reference to European Court of Justice under Article 234 of the Treaty.