Artisent, LLC - [2017] ADO 3

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration Nos. 356855, 356856, 356858 and 356859 in the name of Artisent, LLC– and – examination thereof.

Delegate:

Debrett Lyons

Representation:

Owner : Daneta Crump of FPA Patent Attorneys

Decision:

2017 ADO 3

Designs Act 2003 (Cth) - section 63 examination – subject designs found not to be new and distinctive over the prior art base – section 18 argued - prior disclosures of the designs were not artistic works – – examination completed and designs to be revoked

Background

On 9 July 2014 Artisent, LLC (“the Owner”) filed four applications for design registration under the Designs Act 2003 (“the Act”), each claiming an earlier convention priority date of 14 January 2014 (“the Priority Date”) from corresponding US Design Patent applications.
The applications were for design protection for products in the nature of combat headgear. The applications were registered and the registration numbers and corresponding particulars are:

Registration No.

Product name

Perspective Representation of the Design

356855

Visor

356856

Helmet mounted microphone

356858

Visor and mandible shield assembly

356859

Mandible shield

(“the Designs” or “the Products”)

On 12 November 2014, the Designs were the subject of a request for examination by the Owner.
Examination raised grounds for revocation of the Designs which were maintained through several official reports and in consequence of which the Owner asked to be heard.
The matter came before me, Debrett Lyons, a delegate of the Registrar of Designs for a hearing in Melbourne on 15 September 2016. The Owner was represented by Ms Daneta Crump of FPA Patent Attorneys who attended the hearing in person.
Ms Crump made both written and oral submissions. As a result of discussion at the hearing the Owner was allowed time to submit further legal argument and/or precedent. Further information was sent in a timely manner and this decision takes it into account along with the aforementioned submissions.
Examination
Examination requires the Office to have regard to section 65(2)(a) of the Act which creates a ground for revocation of a registration if the “design is not a registrable design”.Section 15(1) states that a design is registrable if it is new and distinctive compared to the prior art base.
In each case examination followed essentially the same path in terms of timing and content, the Examiner finding that a ground for revocation existed based on disclosures of the Designs before the Priority Date (“the Prior Disclosures”). The Prior Disclosures are of products made by the Owner.
In first reports dated 11 December 2014 the Examiner stated that the Designs are not new or distinctive because they are substantially similar in overall impression to designs shown in the Prior Disclosures.
In response the attorneys for the Owner sought to rely on section 18 of the Act which in limited circumstances immunizes a design registration corresponding with an earlier artistic work from invalidation through prior publication where that publication occurred “by reason only of any use previously made…

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

AGLC: Artisent, LLC [2017] ADO 3
Case: [2017] ADO 3
Decision Date: 24 April 2017

CaseChat Overview and Summary

The decision under review is an examination of design registrations for combat headgear products by Artisent, LLC. The issue before the court was whether the designs in question were new and distinctive when compared to the prior art base. The Owner argued that the prior disclosures were insufficient to anticipate the designs, and alternatively, that the designs were protected under section 18 of the Designs Act 2003. The court found that the prior disclosures were sufficient to establish that the designs were not new and distinctive. The court further found that section 18 of the Act did not apply because there was no qualifying artistic work as defined in the Copyright Act 1968. The court concluded that a ground for revocation existed under section 63 of the Act, and directed that the design registrations be revoked.

The decision is a comprehensive analysis of the relevant provisions of the Designs Act 2003 and the Copyright Act 1968. The court found that the prior disclosures were sufficient to establish that the designs were not new and distinctive, and that the Owner's argument under section 18 of the Act was unavailing because there was no qualifying artistic work. The decision provides useful guidance on the interpretation of the relevant provisions of the Acts, and the application of the principles of novelty and distinctiveness in the context of design registration.

Orders