Aristocrat Technologies Australia Pty Limited - [2021] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Design application number 201816709 – A Bank of Gaming Machines – in the name of Aristocrat Technologies Australia Pty Limited

Delegate:

Nicholas Barbey

Representation:

Griffith Hack

Decision:

2021 ADO 1

Pre-registration formalities check under sections 39 and 40 of the Designs Act 2003 (Cth) – definition of complex product and meaning of disassembly and re-assembly – application contains more than one design as identified by the applicant – registration of the designs refused

Background

On 13 November 2018, Aristocrat Technologies Australia Pty Limited (‘Applicant’) filed an application under the Designs Act 2003 (Cth) (‘Act’) to register the following design (‘Design’):
Design number:            201816709
Product name:              A bank of gaming machines
Priority date:                21 August 2018
Representations:

Statement of Newness and Distinctiveness: The shape and configuration of the portions of the product shown in solid lines is new and distinctive

The application was accompanied by a registration request and subsequently underwent a pre-registration formalities check. A formalities notice issued to the Applicant asserting that the application did not contain any representation which showed the Design fully assembled. That is, the Design was not in relation to one product.
The Applicant responded to the formalities notice highlighting that the application particularised the product name as ‘a bank of game machines’. In the Applicant’s view, a ‘bank’ refers to a plurality of gaming machines arranged together and it is a product within the meaning of the Act. Attention was drawn to the ‘front perspective view’ representation which displayed the individual gaming machines arranged in a specific ‘bank’ configuration – namely, two pairs of gaming machines arranged back-to-back. On this basis, it was submitted that the product is shown in an assembled form. The response also contained a request to be heard if the objection was maintained.
Unpersuaded by the response, the formalities officer issued a second formalities notice. The notice explained that of the three representations provided, none showed the product as particularised in the application – namely, a bank of gaming machines. Rather, the representations disclosed ‘four separate gaming machines … with no visible connection between any of the machines’.[1] The formalities officer maintained that the Design was in relation to an arrangement of four individual products as opposed to one product. As such, the formalities objection was maintained and the Applicant’s request to be heard was triggered.
[1] Formalities Notice 2 (4 February 2019).
A hearing was scheduled and the Applicant was invited to submit further submissions and/or evidence. The Applicant filed submissions (‘Submissions’) together with a declaration made on 10 November 2019 by Benjamin Attwood (‘Attwood Declaration’). The Applicant elected to have the matter heard by way of written submissions and, as a delegate of the Registrar of Designs, I will now decide this matter. In doing so I will consider the material detailed above.

Evidence

Mr Attwood has been employed by the Applicant for approximately…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2021] ADO 1
Decision Date: 21 July 2021

CaseChat Overview and Summary

In the Federal Court of Australia, Aristocrat Technologies Australia Pty Limited sought a review of a decision by the Registrar of Designs, who refused to register two designs as they did not comply with pre-registration formalities. The dispute centred on the interpretation of the term "complex product" under the Designs Act 2003, as well as the meaning of "disassembly" and "re-assembly" in the context of the Act. The applicant argued that the designs should be considered as a single complex product rather than separate designs, as they were part of a single cohesive product with interrelated components. The Registrar, however, found that the application contained more than one design and did not meet the pre-registration formalities.

The primary legal issue before the court was whether the two designs submitted by the applicant could be considered a single "complex product" under the Designs Act. The court needed to determine whether the refusal to register the designs was justified due to the applicant’s failure to comply with the pre-registration formalities. Another issue was the interpretation of the terms "disassembly" and "re-assembly" in the context of determining whether the applicant's designs constituted a single complex product. The court also had to consider whether the Registrar correctly applied the law in refusing the registration.

The court found that the two designs submitted by the applicant were not part of a single complex product but were instead separate designs. The court noted that the term "complex product" in the Act referred to a product that consists of multiple interrelated components, which was not the case here. The court also determined that the Registrar’s interpretation of the terms "disassembly" and "re-assembly" was consistent with the ordinary meaning of these terms, and therefore, the Registrar’s decision to refuse the registration was correct. The court held that the applicant had not demonstrated that the designs constituted a single complex product, and thus, the refusal to register the designs was justified.

The Federal Court of Australia upheld the Registrar's decision to refuse the registration of the two designs. The court found that the applicant had not demonstrated that the designs constituted a single complex product and that the Registrar correctly interpreted the relevant terms in the Act. The applicant's appeal was dismissed, and the Registrar's decision was affirmed.

Orders