Hadley Industries v Sloggett

Where a registered design’s statement of novelty refers to a specimen, the specimen must remain available for public inspection. A design registration should enable the public to understand the design from the material available on the Register.

If representations are inadequate, the Registrar should either retain a practicable specimen as part of the registration material or require better representations. Calling for a specimen merely to assess drawings and then returning it is undesirable in principle.

Mr Sloggett applied for registration of a design and supplied representations which the Registrar considered inadequate. The Registrar inspected a specimen, accepted the registration with a statement of novelty referring to the representations and specimen, and then returned the specimen.

Hadley Industries appealed to the Registered Designs Appeal Tribunal. The proceedings below and the earlier hearing proceeded without the specimen. The central issues were whether the specimen should be restored to the Register and whether the Tribunal had power to direct that course.

1. Specimen required for inspection. The statement of novelty claimed novelty in the shape, configuration and pattern of the article as shown in the representations and specimen. Since the specimen had been returned, a person inspecting the Register could not properly understand the statement of novelty. Where a statement of novelty refers to a specimen, it is unsatisfactory for no specimen to be available for inspection.
2. Registrar’s practice. The Registrar should exercise care before calling for specimens merely to decide whether drawings adequately represent a design. If the representations are inadequate, the proper course is either to call for a sample where practicable so that it forms part of the material available for inspection, or to require better pictures. The intermediate practice of inspecting a specimen and then returning it is undesirable in principle.
3. Power to give direction. The Tribunal had power, arising from the combination of section 11 and section 28 of the Registered Designs Act 1949 and rules 17 and 50, to direct that the specimen be placed on the Register and made available for public inspection.
4. The appropriate direction was accordingly made. The court was then to hear what further course should be taken on the appeal.

• Registrar: Accepted the design registration after considering the representations and specimen, but returned the specimen.
• Registered Designs Appeal Tribunal: Directed that the specimen be placed on the Register and made available for public inspection; further consideration of the appeal was to follow.