D03.12 Interface with Court Proceedings

Date Published

When relevant proceedings in relation to a design are started, the Registrar cannot start, or continue, with an examination of a Design (unless the court orders examination of the design). Relevant proceedings are court proceedings in respect of infringement, revocation, or validity of the design are in dispute. [See definition in s.5]. See also [D03.5 Court Proceedings]

However such court proceedings do not bring finality to the examination. Once the court proceedings are concluded, examination resumes (assuming the Design has not been revoked by the Court) with the time for completion of the examination being determined by the Registrar.

It may be observed that if the material before the Registrar has been judicially considered and found by the court to be insufficient to establish a ground for revocation, the Registrar would almost certainly adopt that conclusion (even though issue estoppel does not apply to the Registrar in such circumstances.)

However the mere fact that there have been court proceedings which have concluded without the Design being revoked does not give rise to a presumption of validity. For example, material before the Registrar may not have been before the court. Or relevant material before the court may not have been judicially considered by the court (such as in the case of consent orders, or where there has been a default judgement because a party failed to appear.) Accordingly the examiner should only consider discounting material that has been judicially considered, as evidenced from the decision of the court. Even then, it needs to be remembered that a court of law is bound by the strict rules of evidence whereas a tribunal (such as the registrar) may have regard to probative evidence of any kind – and in that context the general rule is that a tribunal that is required to decide an issue will be in breach of that obligation if it merely adopts the decision of the judge on the same issue. Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126. That is, it is open for the Registrar to reach a conclusion that contradicts that reached by a judge.

The full excerpt from Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126 is:

17 The second error (deference to the findings of the judge) requires some introductory comments. Proceedings in courts of law are bound by strict rules of evidence. In R v Deputy Industrial Injuries Commissioner; Ex parte Moore [1965] 1 QB 456, 488 Diplock LJ explained that "[f]or historical reasons, based on the fear that juries who might be illiterate would be incapable of differentiating between the probative values of different methods of proof, the practice of the common law courts has been to admit only what the judges then regarded as the best evidence of any disputed fact, and thereby to exclude much material which, as a matter of common sense, would assist a fact-finding tribunal to reach a correct conclusion." In contrast, unless otherwise provided by statute, rules of evidence do not bind administrative tribunals. Subject to an overriding duty of fairness (as to which see Board of Education v Rice [1911] AC 179, 182) a tribunal may have regard to probative evidence of any kind and from any source. It may even act upon its own knowledge, whether it be factual or scientific: Mahon v Air New Zealand [1984] AC 808.

18 The evidence to which an administrative tribunal may have regard can include evidence that has been given in another proceeding, including a court proceeding, provided the evidence is relevant to an issue before the tribunal: In re A Solicitor [1993] QB 69, 77. A tribunal may also accept as evidence the reasons for judgment given by a judge in other proceedings. But if the tribunal takes the approach that it should not disagree with findings made by the judge then the tribunal has fallen into error. The general rule is that a tribunal that is required to decide an issue will be in breach of that obligation if it merely adopts the decision of the judge on the same issue. (I put to one side (a) decisions which are the trigger for administrative proceedings and (b) criminal convictions which operate in rem and may not be challenged in collateral proceedings.) I do not mean to imply that reasons for decision given by a judge are irrelevant to an administrative tribunal. First of all, those reasons may, as I have said, be received into evidence. They must then be given some weight. Indeed, the judge’s findings may be treated as prime facie correct. On the other hand, if the judge’s findings are challenged, the tribunal must decide the matter for itself on the evidence before it: General Medical Council v Spackman [1943] AC 627.

19 Of course, when the tribunal is required to decide the matter for itself it is entitled to have regard to the judge’s findings. What weight it attaches to those findings will depend on a variety of considerations. Without in any way wishing to be exhaustive, the considerations can include: (a) whether the tribunal has available to it more evidence than was before the judge; (b) whether the arguments put to the tribunal were made to the judge; and (c) whether the tribunal is a specialist body with expert knowledge of the subject matter.

20 Now, in this case I fear that the delegate was intending to place too much emphasis on the judge’s or judges’ findings. In her reasons she said, correctly, that the court proceedings could "resolve issues which would require determination in the present oppositions." To proceed on the basis that it is unlikely that the Registrar will depart from the court’s findings and, that there is a public interest in avoiding inconsistent fact findings, indicates to me that there is a real risk that the delegate was not going to decide for herself the issues that must be decided to dispose of the opposition proceedings.

See also:

  • Data dot v Alpha MicroTech 59 IPR 402, where there was no consideration of alleged anticipations because the alleged infringer failed to appear.
  • Novartis v Bausch & Lomb 62 IPR 71, where the parties settled the day before the judgement was due to be issued. It is apparent from the reasons that the Judge had intended revoking the patent in whole – but because the parties had settled he felt unable to do so.