Oakley Inc v Animal Ltd. & Ors

Oakley Inc v Animal Ltd. & Ors

Regulation 12 of the Registered Designs Regulations 2001 is ultra vires to the extent that it purports to apply the old national law to design registrations applied for after 28 October 2001, contrary to Directive 98/71/EC. The regulation is severable, and the remainder of the 2001 Regulations stands. If the ECJ rules that the derogation could not be exercised after 28 October 2001, the grace period applies to Oakley's design.

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 / Supplementary Judgment on Preliminary Point of Law
Outcome
Preliminary point decided in favour of Animal, subject to ECJ reference; permission to appeal granted; reference to ECJ ordered.
Legal Topics
Registered Designs, Ultra Vires, Implementation of EU Directives, Severability of Regulations
Intellectual Property Constitutional Law European Union Law Registered Designs Ultra Vires Implementation of EU Directives Severability of Regulations

Case Brief

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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 / Supplementary Judgment on Preliminary Point of Law

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 United Kingdom could lawfully adopt the derogation in Article 11.8 of Directive 98/71/EC after 28 October 2001

Ratio Decidendi

Regulation 12 of the Registered Designs Regulations 2001 is ultra vires to the extent that it purports to apply the old national law to design registrations applied for after 28 October 2001, contrary to Directive 98/71/EC. The regulation is severable, and the remainder of the 2001 Regulations stands. If the ECJ rules that the derogation could not be exercised after 28 October 2001, the grace period applies to Oakley's design.

Court Disposition

Preliminary point decided in favour of Animal, subject to ECJ reference; permission to appeal granted; reference to ECJ ordered.

Orders

  • Secretary of State for Trade and Industry joined as a party for purposes of appeal and ECJ reference.
  • Reference to the European Court of Justice under Article 234 of the Treaty for a preliminary ruling.