Aristocrat Technologies Australia Pty Limited
[2021] ADO 1
•21 July 2021
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 thirteen years in various marketing roles. His current position is Senior Marketing Manager for the Applicant in Australia and New Zealand. In this role, he frequently interacts with customers about the Electronic Gaming Machine (‘EGM’) products offered by the Applicant. As such, Mr Attwood submits that he has a detailed understanding of commercially viable EGM features.
In Mr Attwood’s experience, EGMs are presented in ‘banks’ on a venue’s gaming floor. He observes that a bank of EGMs may include between four to eight individual EGMs, often share a common theme (such as game style) and each bank is usually sourced from the same manufacturer. Mr Attwood claims that there are common configurations for a bank of EGMs. These include an ‘eight bank’ arrangement where four EGMs are placed back-to-back, a ‘four flat’ arrangement where four EGMs are placed against a wall and a ‘carousel’ arrangement where five EGMs are placed in a carousel shape.[2]
[2] Attwood Declaration, [10].
According to the Attwood Declaration, venues ordinarily update their gaming floor by replacing banks of EGMs as opposed to replacing EGMs individually. Mr Attwood notes that while the Applicant offers both individual EGMs and banks of EGMs, the latter is more commonly purchased. When a bank of EGMs is sold, the Applicant provides the components of the bank (e.g. the individual EGMs, overhead signage) to the customer as well as instructions regarding the relative positioning of the EGMs. However, the physical assembly of a bank of EGMs is completed by the customer at their own venue. In this regard, Mr Attwood explains that the electronic connections between the EGMs are generally hidden ‘within a base or raised flooring on which the EGMs are assembled’.[3]
[3] Ibid [14].
Mr Attwood declares that he was shown the representations of the Design and identified the product as being a ‘four-machine bank, in the configuration two back-to-back as would be assembled on a gaming floor’.[4] A similar process occurred in relation to the representations of Australian design registrations 201814988, 201814920 and 201814901 (‘Prior Registrations’).[5] Again, Mr Attwood identified the product disclosed in each set of design representations as being a bank of gaming machines.
[4] Ibid [15].
[5] See Annexure 1 to this decision which contains the representations for each of the Prior Registrations.
Legislative framework
Section 39 of the Act provides:
Formalities check--applications in respect of one design only
(1) This section applies to a design disclosed in a design application if:
(a) the design is the only design disclosed in the application; and
(b) the applicant has requested that the design be registered.
(2) The Registrar must register the design if the Registrar is satisfied that:
(a) the design application satisfies the formalities check specified in the regulations; and
(b) if the design is purportedly a common design in relation to more than one product--that the design is a common design in relation to each product; and
(c) the Registrar is not required to refuse to register the design under subsection 43(1).
Section 40 of the Act provides:
Formalities check--applications in respect of more than one design
(1) This section applies if:
(a) more than one design is disclosed in a design application; and
(b) the applicant has requested registration of one or more of those designs.
(2) The Registrar must register a design requested to be registered if the Registrar is satisfied of the following:
(a) that each product to which the design relates belongs to the same Locarno Agreement class;
(b) if the design requested to be registered is purportedly a common design in relation to more than one product--that the design is a common design in relation to each product;
(c) that the design application satisfies the formalities check specified in the regulations;
(d) that the Registrar is not required to refuse to register the design under subsection 43(1).
Regulation 4.05 of the Designs Regulations 2004 (Cth) (‘Regulations’) relevantly provides:
Formalities check--applications in respect of more than 1 design
(1) For paragraph 40(2)(c) of the Act, the formalities check is confirmation, by the Registrar, that:
…
(g) the number of designs disclosed in the design application is the number of designs identified, by the applicant, as being separate designs disclosed in application …
Discussion
At the outset, I note the purpose of a formalities check is to verify that an application contains sufficient particulars to enable a design to be entered in the Register of Designs (‘Register’). A formalities check includes, for example, confirming that the number of designs shown in the representations correspond with the number of designs identified by the applicant. However, it does not entail substantive examination of the application and concepts such as distinctiveness and the informed user[6] are irrelevant in this setting. As such, there is no obligation to accept Mr Attwood’s observations as being an authoritative interpretation of the Design. Since Mr Attwood is a long serving employee of the Applicant, understandably, he is also not a disinterested party. Accordingly, the Attwood Declaration should be approached with circumspection.
[6] See, eg, Designs Act2003 (Cth) s 19(4) (‘Act’). I have previously accepted Mr Attwood to be an informed user of electronic gaming machines: Aristocrat Technologies Australia Pty Limited [2020] ADO 4, [21]-[22].
Broadly speaking, the Submissions advanced two lines of argument. First, it was contended that the Design is in relation to a ‘complex product’ as contemplated by the Act. The Applicant’s position is that the representations show an assembled complex product with the replaceable component parts being constituted by the individual gaming machines. Componentry, such as the jackpot controller and electronic connections between each gaming machine, are alleged to be concealed within a raised floor or a base upon which the complex product sits atop. The Submissions point out that the Act does not require hidden features of a product to be shown when it is in an assembled form. In the Applicant’s view, the treatment of a kit under the Act further strengthens its position that the representations disclose a complex product.
Second, the Applicant contends that, for consistency, the Design should proceed to registration. Attention was drawn to the Prior Registrations which, in the Applicant’s view, disclose banks of gaming machines analogous to the present Design given there is no physical connection between the individual gaming machines depicted in each registration. Reliance was also placed on Mr Attwood’s identification of the Design as a bank of gaming machines together with his evidence that the relevant market recognises same as a product.
Accordingly, the present matter concerns the representations of the Design and whether they correspond to the product name identified in the application. This was the only deficiency raised in the formalities check. If the representations of the Design are found to be consistent with the specified product name (i.e. the representations disclose a single design in relation to one product), the Registrar must register the Design. However, if inconsistency exists between the representations and the product name, such that the application is determined to include further designs,[7] the Registrar may refuse to register the Design. This is because the Applicant had prior notice of the deficiency and declined to amend the application.
[7] Designs Regulations 2004 (Cth) reg 1.04 (interpretation of ‘further design’) which ‘means a design that is disclosed in a design application, but that has not been identified, by the applicant, as being a separate design disclosed in the application’.
Interpretation
For clarity, the substantial issue for determination is whether the representations provided in the application show one product or four individual products. The Applicant’s position, that the former applies, primarily rests on its interpretation of the terms ‘product’ and ‘complex product’. It is therefore necessary to consider the intended meaning of each term as they appear in the Act. This requires attention to be given to both the text of the provision itself as well as ‘the context for and purpose of the provision’.[8]
Product
[8] R v A2 [2019] HCA 35, [36].
The term ‘product’ was introduced in the Act and replaced the term ‘article’, which appeared in the design definition under the Designs Act 1906 (Cth). The introduction of the term ‘product’ was largely cosmetic given its perception as being a ‘more contemporary word’.[9] The new design definition was aimed at excluding ‘naturally occurring things from design protection’[10] but did not substantially widen the scope of things that could attract design protection.[11]
[9] Australian Law Reform Commission, Designs (Report No 74, 1995) para 4.9 (‘ALRC 74’).
[10] Revised Explanatory Memorandum, Designs Bill 2003 (Cth) 26.
[11] ‘Government response to ALRC Report 74’, see response to recommendation 10, (Web Page) <>
Section 5 of the Act relevantly provides:
"design", in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.
…
"product" has the meaning given by section 6.
Section 6 of the Act relevantly provides:
Definition of product
(1) For the purposes of this Act, a thing that is manufactured or hand made is a product (but see subsections (2), (3) and (4)).
(2) A component part of a complex product may be a product for the purposes of this Act, if it is made separately from the product.
…
(4) A kit which, when assembled, is a particular product is taken to be that product.
Section 8 of the Act provides:
References in this Act to a design
In this Act, a reference to a design is a reference to a design in relation to a product.
Evidently, ‘product’ in the above provisions is consistently drafted in the singular (e.g. ‘a product’, ‘a particular product’) which suggests that the ordinary meaning of a design is in relation to one product. This reading is internally consistent with the definition of ‘product’ being ‘a thing that is manufactured or hand made’.[12] Again, phrasing ‘a thing’ in the singular indicates that ‘product’ pertains to one thing. However, s 23(b) of the Acts Interpretation Act 1901 (Cth) (‘AIA’) creates a presumption of statutory construction that words in the singular number include the plural and vice versa. The mere fact that the above provisions appear to emphasise singularity is insufficient to displace this presumption.[13] Thus, these provisions are not sufficient to establish that a reference to ‘product’ should be construed as being one product.
[12] Act (n 6) s 6(1) (emphasis added).
[13] Blue Metal Industries Ltd v Dilley (1969) 117 CLR 651, 656 (‘Dilley’).
Nevertheless, the operation of s 23(b) of the AIA is subject to a contrary intention appearing in the Act.[14] Ascertaining the existence of a contrary intention to include the plural is not restricted to consideration of a particular section of the Act. Instead, the ‘substance and tenor’[15] of the Act in its entirety should be considered. In my view, a contrary intention appears in s 22 of the Act which relevantly provides:
[14] Acts Interpretation Act 1901 (Cth) s 2(2) (‘AIA’).
[15] Dilley (n 13) 656.
A design application may be in respect of more than one design
(1) A single design application may be in respect of:
(a) one design in relation to one product; or
(b) one design that is a common design in relation to more than one product; or
(c) more than one design in relation to one product; or
(d) more than one design in relation to more than one product, if each product belongs to the same Locarno Agreement class.
…
(3) To avoid doubt, a design that is a common design in relation to more than one product is a design in relation to each product.
The repetition of ‘one product’ in s 22 of the Act represents a clear contrary intention. It is evident from this provision that ‘product’ should not be understood as including the plural. The different types of applications envisaged by each subsection makes it plain that a single design must correspond to one product. Indeed, a design that is in relation to ‘more than one product’ is specifically addressed and categorised as a ‘common design’.[16] This interpretation is further supported by s 111 of the Act which prescribes the particulars of a registered design that must be entered in the Register. Specifically, s 111(2)(a) of the Act states that ‘the product or products in relation to which the design is registered’[17] must be recorded. This express distinction between the singular and plural of ‘product’ reinforces the appearance of a contrary intention to include the plural. For these reasons, I consider that the statutory presumption in s 23(b) of the AIA has been displaced, with any reference to a ‘product’ being intended to mean in the singular. In my assessment, a reference to a ‘product’ should therefore be construed as a reference to one thing.
Complex product
[16] Act (n 6) s 22(3).
[17] Emphasis added.
The introduction of the term ‘complex product’ in the Act stems from the Australian Law Reform Commission’s recommendation that ‘[a] design of a product that consists of a number of component parts should be able to be registered as one design. A component part may itself be a product’.[18] This recommendation recognised the marketplace realities that a product may be assembled from several component parts.[19]
[18] ALRC 74 (n 9) Recommendation 12. This recommendation was accepted by the Australian Government: see Government response to ALRC Report 74 (n 11).
[19] ALRC 74 (n 9) para 4.13.
Section 5 of the Act relevantly provides:
"complex product" means a product comprising at least 2 replaceable component parts permitting disassembly and re-assembly of the product.
Three points may be distilled from this. First, a complex product falls under the term ‘product’ and should accordingly be construed as a reference to one thing. Second, in the phrase ‘disassembly and re-assembly’, the word ‘and’ should be read conjunctively based on its ordinary meaning. Third, the meaning of assembly is essential to this definition because the characterisation of a ‘complex product’ is contingent on the component parts permitting disassembly and re-assembly. The word ‘assembly’ is not defined in the Act. Pursuant to s 15AB(1)(a) of the AIA, guidance to confirm its ordinary meaning may be drawn from the Macquarie Dictionary which relevantly provides:[20]
[20] Macquarie Dictionary (online at 23 June 2021) ‘assembly’ (defs 3, 4, 6).
Assembly
noun (plural assemblies)
3. the act of assembling.
4. the state of being assembled.
6. the putting together of complex machinery, as aeroplanes, from interchangeable parts of standard dimensions.
The clear message from these definitions is that ‘assembly’ involves parts being put together, in the sense of being physically connected, to create one assembled thing. It is apparent that the Act envisages a ‘complex product’ as being in an assembled form. That is, all its component parts being put together to create one thing. This can be inferred from the fact that a ‘complex product’ must, by definition, permit disassembly and re-assembly. To achieve this, a ‘complex product’ must start in an assembled form in order to permit the initial disassembly and subsequent re-assembly (i.e. reversion to its assembled form). To maintain otherwise would cause incongruity within the definition. Accordingly, to satisfy the definition under the Act, at least one representation of a design in relation to a ‘complex product’ should show its assembled form.
Application to the present matter
Turning to the present matter, a gaming machine being a thing that is manufactured, clearly satisfies the definition of a ‘product’ under the Act. Although it was not directly addressed in the Attwood Declaration, I accept that a bank of gaming machines may be disassembled, component parts replaced and then be re-assembled. On this basis, a bank of gaming machines may constitute a ‘complex product’ as contemplated by the Act. Nevertheless, neither proposition assists the Applicant. A formalities check does not involve a consideration of an application’s particulars in relation to theoretical or general principles. Rather, the particulars must be assessed against what has been disclosed in the application. For the reasons that follow, I consider that the representations of the Design are inconsistent with the identified product name and that further designs exist.
The product name is particularised in the application as ‘a bank of gaming machines’ and the Applicant asserts that the representations disclose one product. I do not accept this assertion. In my assessment, the representations disclose four individual gaming machines situated in close proximity to one another. There is no connection between any of the gaming machines depicted. They are not physically joined nor do the representations provide any basis to infer they are connected. On its face, the representations therefore show four discrete products.
The Applicant does not dispute that the gaming machines are not physically connected in the representations. Instead, it posits that the depicted gaming machines are physically connected albeit via electronic connections omitted from the representations because they are usually hidden within a base or in the venue’s gaming floor. The Submissions point out that the Act does not require hidden elements of a complex product to be visible when it is assembled. It is true that no such requirement exists, however, this is not determinative of the issue. This line of argument puts the cart before the horse insofar as it is premised on the representations having disclosed an assembled complex product. Here, no such disclosure exists. The application does not contain a single representation which shows the complex product in an assembled form in the sense of being physically connected. At best, the representations show four disconnected component parts of an unassembled complex product.
The Applicant’s position that a ‘complex product’ is disclosed in the application is only tenable if missing component parts are read into the representations. However, it is not incumbent upon, nor is it open to, a formalities officer to cure a deficiency in an application in this manner. That is, by reading in the presence of undisclosed parts to convert what is outwardly four discrete products into one product. Such an approach would be completely speculative with respect to how the depicted products are connected, the positioning of such connections as well as their visual features. Further, it would be impossible for a third party to discern the presence of the alleged connections from the Design’s representations that will appear on the Register. In short, reading component parts into the representations would render the overall appearance of the Design indeterminate. Plainly, it is an approach that must be rejected.
The Submissions also highlight that a complex product requires an element of assembly and note that a kit under the Act ‘provides for a scenario where assembly will only ever be performed by the end customer’.[21] As I understand this argument, the Applicant is essentially asserting that the representations could be construed as disclosing a kit and there is no requirement to disclose an assembled form because assembly of the kit is completed by the end customer. In my view, this misconstrues the definition of a kit[22] which specifically includes the words ‘when assembled’. As explained above, the application has not disclosed a single representation which shows the complex product in an assembled form. As such, even if I were to ignore the omission of the connectors and interpret the representations as having disclosed a design of parts of a kit, this would not remedy the current deficiency.
[21] Submissions, [11].
[22] See Act (n 6) s 6(4) which has been reproduced at [20] of this decision.
Finally, the Applicant contends that consistent office practice dictates that the Design should proceed to registration given its representations are analogous to the representations of the Prior Registrations. Naturally, consistency in decision making within the Designs Office is highly desirable. However, the probative value of comparing the Design with the Prior Registrations is limited. This is because each design application must be assessed on its own merits. To this end, the mere fact that the Prior Registrations exist on the Register does not override the application of the Act. This is particularly so when consideration is given to the small sample size of registrations referred to by the Applicant. It follows that the mere existence of these Prior Registrations does not alter my view that an inconsistency exists with respect to the number designs disclosed in the application and the number of designs identified by the Applicant.
Decision
In light of the above, I find that the representations should be properly regarded as disclosing four individual gaming machine products and not one product as identified by the Applicant. It follows that the application is deficient because it contains three further designs. As such, I am satisfied that the application does not meet the requirements of reg 4.05(1)(g) of the Regulations. In accordance with s 43(2) of the Act, I refuse to register all of the designs in the application that contains design number 201816709.
An application for a review of this decision may be made to the Administrative Appeals Tribunal under the Administrative Appeals Tribunal Act 1975 (Cth).[23] If an application to review this decision is made on or before one month from the date of this decision, the application will be subject to a determination by the relevant body.
[23] Act (n 6) s 136(1)(d).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
21 July 2021
Annexure 1
Design registration 201814901
Representations:
Design registration 201814920
Representations:
Design registration 201814988
Representations:
2
2
4