3D Geoshapes Australia Pty Ltd v Edward Henry Harvey

[1994] ADO 2

official notice

decision of a delegate of the REGISTRAR OF DESIGNS

Design:  No. 117292 in the name of 3D GEOSHAPES AUSTRALIA PTY LTD

Article:  A Set of Constructional Toy Elements.

Action:  Extension of the Period of Registration; Notices under S.27A; hearing.

Decision:  Issued            .

Abstract:  Extension refused; design not novel in the light of a prior patent specification; disclosing text of specification unambiguously clear.

DESIGNS ACT 1906

decision of a delegate of the registrar of designs

Re:Design No. 117292 in the name of 3D Geoshapes Australia Pty Limited and Notices under Section 27A by Edward Henry Harvey.

BACKGROUND

Application for a registered design no. 2401/92 was lodged on 1 September 1992 by Langmar Pty. Limited. The priority date for purposes of section 17 of the Designs Act is 1 September 1992. The application was registered on 8 June 1993 under registration number 117292. The registered design was assigned to 3D Geoshapes Australia Pty Limited on 21 June 1993.

The initial 12 months registration expired on 8 June 1994. The latest date for lodging a notice under section 27A(4) was 8 May 1994.

On 30 March 1994 Mr Edward Henry Harvey (the "informant") lodged notice under section 27A(4).  The notice was accompanied by a notarised letter and a statutory declaration which refers to Australian patent No. 468084.  It also raised issues about the ownership/authorship of registered design 117292.

On the 13th April 1994 further material was lodged by Mr Harvey. This further material was samples of constructional elements made of plastics material and a photocopy of provisional application 5126/72 filed in the UK by Edward Harvey on 3 February 1972.

On 29 April 1994 Mr Peter Madner, a director of 3D Geoshapes Australia Pty Limited, executed a statutory declaration. This was lodged on his behalf on 2 May 1994 by Mr Alfred Tatlock, patent attorney of A Tatlock & Associates.

On 1 July 1994 both parties were advised that the Registrar of Designs proposed not to extend the period of registration and that he was of the opinion that the design had been prior published by the information provided by the informant. The reasons were set out in a written opinion by the Deputy Registrar of Designs dated 30 June 1994.

The matter was heard in Canberra on 19 August 1994; the registered owner was represented by Mr Tatlock and Mr Harvey was represented by Mr Matthew Smith, solicitor.
I allowed both parties ten days after the hearing to make further submissions on costs.

Further material was lodged by Mr Harvey on 18 July and 22 August 1994; this was considered, ex parte, under S.27A(9) and comments were recieved from the registered owner's attorneys on 13 September 1994.

deputy registrar's opinion

The abovementioned opinion of the Deputy Registrar dated 30 June 1994 reads as follows:

"Information and Reply

For the purposes of section 27A(4) the informant contends:

(i) design 117292 is not a new or original design over the disclosure of AU patent 468084 or GB patent 1378942

(ii) design 117292 is not a new or original design over the disclosure of GB provisional specification 5126/72.

The other matters about authorship cannot be considered under section 27A(4). Therefore I have not considered them any further.

Mr Peter Madner from the registered owner questions whether a UK provisional specification is a document published in Australia and hence a document for the purposes of S27A(4). He also disputes the relevance of AU 468084 and GB 1378942. He further disputes the informant's contentions about authorship. For the reasons given above I have not considered this part of his statutory declaration.

Scope of Design 117292

The scope of registered design no. 117292 is governed by the title of the article, the representations and any statements of monopoly or novelty.

The registration is for a set of constructional toy elements. The elements of the set are shown by the representations which depict a triangle, a square, a triangle with support and a pentagon. Apart from the triangle with support each element comprises a geometric shape formed of a frame with no material within the frame. The frames have a number of interconnecting features permitting members of the set to be connected to each other. These interconnecting features have a functional significance. However for the purposes of the design registration the function is not considered in determining the scope of the design; only the appearance of the feature is.

There are no statements of monopoly or novelty. Thus the scope of the design is governed by the features of shape, pattern, configuration and ornamentation shown in the representations. The present representations show features of shape and configuration.

Statement of Reasons

I am of the opinion that the period of registration of registered design no. 117292 should not be extended. My reasons are as follows:

(a) when the samples of the triangle according to the registered design and the triangle of either the AU or GB patents are placed side by side and compared they are visually different.

However when they are superimposed they have the same shape. The appearance of the interconnecting feature is the same in both.

(b) The differences between the two triangles are that:

(i) that 117292 shows a frame, the other does not

(ii) the dimple effect at the vertices of the triangle in 117292

(iii) the tongue in each side of the triangle of the informant (see feature 6 in figure 3 in GB 1378942). But note figure 4 discloses an alternative embodiment having no tongue.

(c) Australian patent 468084 and GB patent 1378942 both claim priority from provisional specification 5126/72 filed in the UK on 3 February 1972. Under section 54B(1) (g) of the Patents Act (1952) priority documents are made open to public inspection when an application is advertised as accepted. Therefore the GB provisional specification was open to public inspection in Australia on 18 December 1975. I thus cannot agree with paragraph 15 of the Madner declaration.

The law on prior publication of patents is considered to apply equally to designs. See for example Rosedale Associated Manufacturers Ltd. v Airfix Ltd. [1957] RPC 239 at page 244:

"In this respect the test of prior publication of an alleged invention should, in my judgement, be no less applicable in the case of a registered design........if a document is to constitute prior publication, then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind's eye and should not have to depend on his own originality to construct the design from the ideas which the document may put into his head."

The provisional specification clearly teaches to make a triangle or square or polygon (ie. a pentagon) with specific interconnecting means and to omit entirely the centre part of the shapes so that an outer frame results. I draw attention to figures 1 and 3, the disclosure at the last paragraph of page 9 and the reference to "polygons" at page 2 line 15.

I consider the dimples in the vertices of the triangle or the dimples in the corners of the square of the articles represented in the registered design to come about as a result of the manufacturing process for making the articles of the set.

Alternatively, the representations in the registered design are insufficient to distinguish the design from the fundamental form. See Malleys Ltd v J W Tomlin Pty Ltd 35 ALJR 352.

The provisional specification thus prior publishes the registered design.

(d) It could also be argued that 117292 is an obvious adaptation of the design shown on the provisional specification. The removal of the central portion of the article whilst retaining the same shape and configuration of the perimeter is an obvious adaptation of the design shown in the provisional specification."

The last paragraph on page 9 of the British provisional reads as follows:

"Although the planar elements 1 have been shown as being of plate-like form and of even thickness throughout, it will be understood that if desired the thickness of the elements over one or more parts of the area thereof could be reduced so as to economise on material, or the centre part of each element could have apertures therein or could be omitted entirely so that the elements comprised merely an outer frame. In the latter case suitable sheet material could be provided for covering assembled planar elements. If extra strength or rigidity is required then the thickness of the elements can be locally increased, eg. to provide strengthening ribs."

SUBMISSIONS

Mr Tatlock's submissions at the hearing are summarised as follows:

.   Generally, written material cannot be considered as disclosing a design, and an addressee should not have to "construct" the design by his or her "mind's eye". This is apparent from the Rosedale v Airfix case, supra, at 241 and 243, where there are references to designs being judged "by the eye alone" or "solely by the eye"; ie. not by the "mind's eye".

.   The disclosure in the British provisional specification cited relies on combining drawings with text; the reference on page 9 thereof to omitting the centre part of each toy element to economise on material is a "typical patent procedure"; and the disclosure envisages "many possible shapes" for the toy elements and does not lead the addressee to the particular design which is the subject of Registration No. 117292. Also, this part of the provisional specification was not incorporated into the complete British specification.

.   The samples in the evidence provided by 3D Geoshapes and by Mr Harvey are clearly different designs.

.   I should exercise discretion in the registered owner's favour if in any doubt that the registration period should be extended; or, if I find that the design is "partially" prior published, then I should consider directing amendment of the registered design.

Mr Smith's submissions at the hearing are summarised as follows:

.   Even though the registered owner's constructional element prima facie looks different than the informant's constructional element, in fact, the two are the same size and are functionally compatible, ie. they fit together to make a composite toy structure. The only real difference is that the registered owner's article has the centre part removed.

.   Re the Rosedale v Airfix decision: at 244 the report cites Lord Evershed, viz:

"To conclude [that the design was published] would, in my judgement, at least require somewhere in the specification the design or something substantially the same as the design was described with reasonable clarity on a fair reading of the document. In this respect the test of prior publication of an alleged invention should, in my judgement, be no less applicable in the case of a registered design,"

.   This suggests that a design could be prior published by textual disclosure in combination with the drawings in a patent specification.

.   Re the application of my discretion: the Deputy Registrar has expressed an opinion in the matter, ie. that the period of registration should not be extended. Thus it is encumbent on the registered owner to prove that the Deputy Registrar's statement of reasons is fallacious; ie each of paragraphs (a) to (d) of the expressed opinion should be addressed. A significant one of these reasons is that the design is an "obvious adaptation of the design shown on the provisional specification."

Mr Tatlock responded to Mr Smith's submissions by suggesting

.   that functionality of the article is not relevant to designs, and anyway, the spring frame in the registered owner's toy element worked differently than the spring slots in Mr Harvey's toy element, and

.   that there were no substantial reasons given by the Deputy Registrar for his opinion that the design was an "obvious adaptation".

decision

I am of the view that the law allows the text of a patent specification to be cited along with the drawings as a prior publication against a design; this is clear from the Rosedale v Airfix case; at 242 the report cites Lord Evershed viz:

"I agree that, if anticipation of the design in suit can fairly be found within the four corners of the specification as applied to any articles, it will follow that the design will have been 'published`"

and on pages 242 and 243 he clearly considers the alternative embodiments of the invention described in the text of the Clarice Jones specification cited against the registered design.

However any such anticipation must be very clear; at 244 the same report cites Lord Evershed viz:

"if a document is to constitute prior publication then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind's eye and should not have to depend upon his own originality to construct the design from the ideas which the document may put into his head"

and, in the circumstances of that case, the Court of Appeal found that the alternative embodiment from the text of the Clarice Jones citation was not sufficiently clear to constitute prior publication; eg. Lord Evershed was confused by the "involved language of the specification" and Hodson LJ said that the embodiment relied upon by the appellants "by no means leaped to my eye and indeed took me some little time to apprehend at all."

Furthermore, it is clear from the Rosedale v Airfix case that the article cited must be the same as the article to which the registered design is applied, if the former is to be considered as a prior publication. In that case the design was for a child's sand bucket, including a handle, whereas Clarice Jones' patent was for a sand mould of somewhat different shape and without a handle. These differences contributed to the court's finding that the citation was not a prior publication.

Applying this precedent to the present case, I think the text on page 9 of the beforementioned British provisional is crucial. Applying my "mind's eye" to the task, I am satisfied that the abovementioned second paragraph on page 9 and the drawings of the British provisional constitute a prior publication of three out of the four representations of the registered design: ie. the "triangle", the "square" and the "pentagon" are prior published. (A pentagon per se is not shown in the citation, but I consider this to be a mere workshop variation of the triangle and the square). I think the statement that "the centre part of each element could.... be omitted entirely so that the elements comprised merely an outer frame" is unambiguously clear and leaves little to the imagination. What immediately "leaps to the eye" upon reading this statement is the same as what is shown in the representations of the registered design.

The circumstances in this case can be distinguished from those in the Rosedale v Airfix case, since in the present case (i) the disclosure is immediately clear and simple to the mind's eye, and (ii) Mr Harvey's article is the same article to which the registered design is applied, ie. they are both constructional toy elements of a similar size and function.

Having regard to the fourth representation in the registered design, ie. the "triangle with support", which shows three supporting arms and a central ring inside an outer triangular frame, I have some doubt whether this is prior published by the British provisional. Mr Tatlock referred, without much elaboration, to the possibility of "partial publication" and amendment of the design, and I assume that he was thinking of the "triangle with support" in this regard.

The issue of "partial" publication was dealt with by the Deputy Registrar in Re Application by William Heithersay (1986) 7 IPR 425. That case also dealt with a set of toy construction elements, and, as reported at 431, the Deputy Registrar refused to extend the period of registration even though he found that only one of the elements in the set was not new or original. I have nothing before me to indicate that this precedent does not apply to the present case.

With regard to Mr Tatlock's comment on amendment of the registered design: as far as I can ascertain, there is no provision in the Designs Act to allow a design to be amended after registration. See also Intellectual Property in Australia by Lahore et al, paragraph 2.3.018, note 4.

Thus I find that Design No. 117292 is not a new or original design over the disclosure of GB provisional specification 5126/72.

costs

On the issue of costs, Mr Smith submitted

.   that the informant should not be liable for costs because he was represented at the hearing only as an interested third party; the hearing was in effect a review of the Deputy Registrar's earlier decision

.   that Sub-regulation 25(4) refers only to the registered owner of the design being entitled to be heard in Section 27A matters, thus "the informant has no automatic right of appearance" and therefore should not be liable for costs; this procedure is distinguishable from that applied to petty patents,

.   that, even though his client is not exposed to costs, costs should be awarded in his favour if I decide not to extend the period of registration.

On the issue of costs, Mr Tatlock submitted

.   that there is some doubt whether the informant has a right to be represented at the hearing (Mr Tatlock didn't know that Mr Harvey would be represented), but since the informant was represented, the hearing should be considered as an inter partes matter and the informant could therefore be liable for costs,

.   that the hearing is not a review of a decision of the Deputy Registrar; the Deputy Registrar's statement of reasons for not extending the period of registration was only a "report" [opinion].

On the issue of the award of costs, I think Mr Smith's submissions are coloured by some approbation and reprobation, but I agree that the appropriate procedures are not the same as those used for petty patents. The issue seems to be covered by Designs Practice Note (No 3): 21 May 1992, which relates to S.27A procedures, and which came to light after the hearing. The last three paragraphs of the practice note read as follows:

"3.    If either party requests a hearing, the other party will be advised, and invited to request to be heard. A hearing date will be set, normally on a date mutually agreeable to all the parties wishing to be heard.

4.     If a hearing is held and the informant does not request to be heard, the registrar will not make an award of costs for that hearing.

5.     Where an informant requests to be heard, the registrar may make an award of costs if it is appropriate in all the circumstances."

Mr Tatlock submitted that there is no support for paragraphs 3 to 5 of the Practice Note (nor for sub-paragraphs 2(ii) and 2(iii)) in either the Act or Regulations; and whilst I am somewhat sympathetic with this argument, in the light of a lack of reference to the informant in Sub-regulation 25(4), and sympathetic to his surprise in finding that the hearing was not in fact ex parte; I consider that it is appropriate, under the principles of natural justice, that the informant has an opportunity to be heard. Section 46 of the Act empowers the Registrar to hear the informant, viz:

"46 Where a discretionary power is by this Act given to the Registrar, he shall not exercise that power adversely to a person without giving to that person an opportunity of being heard."

It was appropriate that the informant was heard in the present case, and I am of the view that the hearing on 19 August 1994 was therefore an inter partes matter, and either party could have been liable for costs under Section 42A(d). However, since I have now decided that it is not appropriate to extend the period of registration, I will follow the usual practice of costs following the event: thus I award costs against the registered owner of the design.

(J I Welsh)
Delegate of the Registrar of Designs

Attorneys for the registered owner:    A Tatlock & Associates, Carlton, Vic.

Solicitors for the informant:    Sparke Helmore, Newcastle, NSW