Australian Fitness Supplies Pty Ltd v Rasheed Rane
[2013] ADO 6
•13 September 2013
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 338172 in the name of Australian Fitness Supplies Pty Ltd
and
Request for revocation under section 51 by Rasheed Rane
| Delegate: | Debrett Lyons |
| Representation: | Decision on the written record |
| Decision: | 2013 ADO 6 |
Background
On 27 July 2011 an application was made under the Designs Act 2003 (“the Act”) by IP Holdings Pty Limited to register a design in respect of a product entitled “Gym fitness equipment” (“the Design”).
Daniel Alenaddaf was nominated as the designer.
The Design was registered on 19 August 2011 (“the Registration”).
Ownership of the Registration was transferred to Australian Fitness Supplies Pty Ltd (“the Owner”) in consequence of a Deed of Assignment made on 14 July 2012.
On 13 May 2013, Rasheed Rane (“the Requestor”) made a request for revocation (“the Request”) of the Registration under section 51 of the Act.
The Request includes grounds for revocation which stated in redacted form:
Mr Daniel Alenaddaf is listed as the sole designer of the Design. Ownership was transferred to Australian Fitness Supplies Pty Ltd (‘AFS’) by Deed of Assignment dated 14 July 2012. Mr Alenaddaf is the Managing Director of AFS.
…
Annexed and marked Exhibit 2 is a printout from the website of Nantong Ruilin International Co Ltd of Nantong, Jiangsu, China (‘Nantong’) which shows the AF1001 TRANSFORMA.The AF1001 TRANSFORMA is imported into Australia from Nantong and retailed under the ‘MONSTER G6’ brand by AFS.
The AF1001 TRANSFORMA is also imported into Australia from Nantong by Renouf Import Direct Pty Ltd, which trades as ‘Renouf Home Fitness’ of 72 Collingwood Street, Osbourne Park WA 6017. Renouf Fitness retails the AF1001 TRANSFORMA under the brand name 360PT.
Annexed and marked Exhibit 3 is a printout from the website: The printout shows various depictions of the 360PT.
A Youtube of a video made by Renouf Home Fitness which is entitled “360PT Multi-Functional Trainer - Weight Stacks - Smith Machine - Power Rack” can be accessed at
Annexed and marked Exhibit 4 is a printout of an email exchange on 21 January 2013 between Zaid of Southside Fitness and Carl of Natong. Zaid stated:
“Also, Item AF1001, did your factory design this machine or is it Australia Fitness Supplies machine & design?”
Carl stated in reply:
“AF1001 is our factory design. Because we have a contract with AFS, so we couldn't sell to you.”
Annexed and marked Exhibit 5 is an email dated 1 March 2013 from Carl of Nantong, which states:
We know that you bought TRANSFORMA AF1001 – 10 pieces from Nantong Kylin last year. This item is our original design and we have three patents for it. Base on the contract between AFS & us, and you & AFS are in Australia, we couldn’t sell AF1001 to you now. Please understanding.
In order to protect our own interests, we bring a suit against Kylin. Hope you can stop ordering AF1001 from them. If you want to order this item, we can ask AFS to give you a discount.
Annexed and marked Exhibit 6 is a copy of Chinese Invention Patent Application No. CN201110022338.3 entitled ‘Fitness Equipment’. The Applicant is listed as Nantong Ruisheng Sport & Leisure Articles Co., Ltd (南通瑞升运动休闲用品有限公司) and the inventors listed are Qian Lin (钱林), Xuan Jianming (宣建明) and Zhu Ningfei (朱宁飞). The publication date of the application is 20 July 2011 (Australian registered design number 338172S was filed on 27 July 2011). The drawings of the Invention Patent Application show a design which is identical or substantially similar in overall impression to the Design which is the subject of Australian Registered design number 338172S.
Annexed and marked Exhibit 7 is a copy of Chinese Utility Patent Application No. CN201120017565.2 entitled ‘Fitness Equipment’. The Utility Patent has the same applicant and inventors as the Invention Patent Application.
Annexed and marked Exhibit 8 is a copy of Chinese Design Patent Application No. CN201130010610.7 which shows various drawings of the Design.
Accordingly, Nantong Ruisheng Sport & Leisure Articles Co., Ltd was the only entity entitled to register the Design at the time the Design was first registered, and neither IP Holdings Pty Limited, nor Australian Fitness Supplies Pty Ltd was an entitled person at that time.
Accordingly, the Registrar should be satisfied that Australian Fitness Supplies Pty Ltd was not an entitled person in relation to the Design when it was first registered and the registration should be revoked.
On 3 July 2013 the Office wrote to the Owner notifying it of the Request and giving the Owner until 3 August 2013 in which to indicate whether or not it intended to contest the claim made by the Requestor. That letter went on to state that if no response was made within the time given then that matter would be determined on an ex parte basis. No response was received by this Office, either by the due date or at all.
The Registrar has appointed me as her delegate to decide this matter which I do based on the material of record before me, comprising the Request, the statement of grounds for revocation together with the material appended thereto, all prepared and filed by the Requestor’s representatives, Cullens Patent & Trade Mark Attorneys. It was made clear to the Office and to me by those attorneys that further submissions were regarded as unnecessary.
Legislative provisions
Section 51 of the Act states that “[A] person may apply to the Registrar for revocation under section 52 of the registration of a design”.
10. In turn, section 52 provides that:
(1) This section applies if a person makes an application under section 51 for revocation of the registration of a design.
(2) If the Registrar is satisfied that:
(a) a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or
(b) each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time;
the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.
(3) If the Registrar makes a declaration under subsection (2), the Registrar must:
(a) give the relevant parties a notice stating that the registration of the design is revoked; and
(b) make an entry in the Register under section 115.
(4) The Registrar must also publish a notice, in the form prescribed by the regulations, stating that the registration of the design has been revoked and that the design is taken never to have been registered.
(5) The Registrar must not revoke the registration of a design under this section unless the Registrar has given each original registered owner a reasonable opportunity to be heard.
(6) The Registrar must not revoke the registration of a design under this section while relevant proceedings in relation to that design are pending.
(7) An appeal lies to the Federal Court against a decision of the Registrar under this section.
11. Section 5 of the Act defines an “entitled person” as:
entitled person, in relation to a design, means a person entitled under section 13 to be entered in the Register as the registered owner of the design.
12. Section 13 states:
13 Who is entitled to be registered as the registered owner of a design
(1) A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the registered owner of a design that has not yet been registered:
(a) the person who created the design (the designer);
(b) if the designer created the design in the course of employment, or under a contract, with another person—the other person, unless the designer and the other person have agreed to the contrary;
(c) a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law;
(d) a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person;
(e) the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d).
(2) Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of a design that has not yet been registered if:
(a) the person has assigned all of the person’s rights in the design to another person; or
(b) the person’s rights in the design have devolved on another person by operation of law.
(3) To avoid doubt:
(a) more than one person may be entitled to be entered on the Register as the registered owner of a design; and
(b) unless the contrary intention appears, a reference to the registered owner of a registered design in this Act is a reference to each of the registered owners of the design.
(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered.
The evidence
13. As indicated already, there is no formalized evidence. There are no sworn statements, nor any declarations. Statements in emails, for example, must therefore be given appropriate weight.
14. The Request was prepared and filed by Cullens, Patent & Trade Mark Attorneys. The named Requestor is Rasheed Rane. The accompanying statement of grounds for revocation states that “Cullens acts for the proprietors of Southside Fitness” and that “[Cullens] is authorized to make this statement on behalf of the proprietors of Southside Fitness.”
15. There is no indication of the identity of the proprietors of Southside Fitness. Exhibit 4 to the statement of grounds is an email forwarded to Cullens by “Rasheed” of Southside Fitness. There is no explanation of the connection between the Requestor and Southside Fitness however in the absence of any submissions from the Owner it is fair to draw the finding that Cullens is somehow authorized to act for both.
16. The disputed entitlement relates to the Design for a product which is commonly described as a “multigym” or “multi functional trainer”. Exhibit 2 shows a multigym identified as a TRANSFORMA AF1001. The image is taken from the website of a Chinese company, Nantong Ruilin International Co Ltd (“Nantong Ruilin”).
17. The Requestor alleges that the AF1001 TRANSFORMA is imported into Australia from Nantong Ruilin and retailed under name “MONSTER G6” by the Owner, however I cannot find any evidence of that claim.
18. The Requestor also alleges that the AF1001 TRANSFORMA is imported into Australia from Nantong Ruilin by Renouf Import Direct Pty Ltd, which trades as ‘Renouf Home Fitness’ of 72 Collingwood Street, Osbourne Park WA 6017 and that Renouf Fitness retails the AF1001 TRANSFORMA under the name “360PT”.
19. Exhibit 3 shows various depictions of a “360PT” multi functional trainer taken from the website of a business by the name of Renouf Fitness. I note that when I access that site the same company offers a model “180PT”, a model “180PT-BWS” with weight stacks and a model “180PT-PLUS”. They are all marketed under the trade mark BRUTE FORCE and so “360PT” seems to be more in the nature of the model name, albeit that nothing in my decision turns on that observation.
20. Exhibit 4 shows an email exchange on 21 January 2013 between Zaid of “Southside Fitness” and Carl of Nantong in which Zaid asked: “Also, Item AF1001, did your factory design this machine or is it Australia Fitness Supplies machine & design?” Carl stated in reply: “AF1001 is our factory design. Becuase we have a contract with AFS, so we couldn't sell to you. By the way, we also couldn’t sell sub1140B to you. This design is from AFS. …”
21. Exhibit 5 shows an email dated 1 March 2013 from Carl to Zaid, captioned TRANSFORMA AF1001 CASE, which states:
We know that you bought TRANSFORMA AF1001 – 10 pieces from Nantong Kylin last year. This item is our original design and we have three patents for it. Base on the contract between AFS & us, and you & AFS are in Australia, we couldn’t sell AF1001 to you now. Please understanding. In order to protect our own interests, we bring a suit against Kylin. Hope you can stop ordering AF1001 from them. If you want to order this item, we can ask AFS to give you a discount. Same time, we can design one GYM for you to expand your business.
22. Exhibit 6 shows a copy of Chinese Invention Patent Application No. CN201110022338.3. The invention is for “Fitness Equipment”. The Applicant is Nantong Ruisheng Sport & Leisure Articles Co., Ltd (“Nantong Ruisheng”). The inventors are Qian Lin, Xuan Jianming and Zhu Ningfei. The publication date was 20 July 2011.
23. Exhibit 7 shows a copy of Chinese Utility Patent Application No. CN201120017565.2 for “Fitness Equipment” with the same applicant and inventors as Patent Application No. CN201110022338.3.
24. Exhibit 8 shows what are said to be the representations of Chinese Design Patent Application No. CN201130010610.7 although there is nothing to allow me to verify that claim. There is no information about ownership or the designer(s).
Discussion and findings
25. Reading between the lines of the statement of grounds, it seems that the core of the Requestor’s case is that the Owner is a mere distributor of products bearing the Design and is not itself the designer or otherwise entitled to the Design by operation of section 13.
26. Section 13 states, inter alia, that the following persons are entitled to be entered on the Register as the registered owner of a design that has not yet been registered: (a) the person who created the design (the designer); (b) if the designer created the design in the course of employment, or under a contract, with another person—the other person, unless the designer and the other person have agreed to the contrary; (c) a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law; (d) a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person.
27. Putting to one side the question of the nature of the relationship between the named designer, Daniel Alenaddaf, and the original applicant, IP Holdings Pty Ltd – a matter which does not seem to be questioned – the section 13 entitlement of IP Holdings Pty Ltd hinges on the legitimacy of the claim that Daniel Alenaddaf was the designer of the Design.
28. As I see it, the line of logic which the Requestor would ask me to accept is that Nantong Ruilin makes and sells a multigym which is the subject of both patent and design applications in China. The named inventors and designers are three men - Qian Lin, Xuan Jianming and Zhu Ningfei – and Nantong Ruilin has put it in writing to Southside Fitness that the multigym is their factory design. Further, that the Design is for the same multigym and so Daniel Alenaddaf could not have been the designer (or, to the extent that it might be shown otherwise, not the sole designer). It then follows that the neither IP Holdings Pty Ltd nor the Owner could be “entitled persons”.
29. The supporting material before me falls short of convincing me that I should reach that conclusion.
30. The material I have been given shows that Nantong Ruilin makes and sells a TRANSFORMA AF1001 multigym. It appears to me that the “360PT” multi functional trainer offered for sale in Australia by Renouf Fitness is one and the same apparatus as that shown on the Nantong Ruilin website. Put another way, my observation is that the TRANSFORMA AF1001 multigym carries visial features which appear to be identical to those of the design of the BRUTE FORCE 360PT multigym.
31. Nantong Ruilin claims to have patents in respect of that multigym but there is no evidence of that claim. Another Chinese company, Nantong Ruisheng, has filed for patent and design protection of what is called (in the patent applications at least), “Fitness Equipment”. The named inventors of that apparatus are Qian Lin, Xuan Jianming and Zhu Ningfei.
32. Nantong is a medium sized Chinese city. It is reasonable to assume that a great many businesses use the city name as part of their company name or trading name. The fact that both companies incorporate the placename “Nantong” in their names does not lead me to think that Nantong Ruilin and Nantong Ruisheng are connected any more than the alleged infringer, Nantong Kylin, is connected with one or other of those companies. Moreover, the terms “Ruilin” and “Ruisheng” are mere “feel good” Chinese expressions which do not suggest a corporate connection of any kind. The remaining terms are purely descriptive. In short, there is no cogent reason for me to accept that there is any sort of relationship between Nantong Ruilin and Nantong Ruisheng.
33. It follows that there is no reason for me to accept that the intellectual property described in Exhibits 6-8 is associated with the TRANSFORMA AF1001 multigym, nor that Qian Lin, Xuan Jianming and Zhu Ningfei are the designers of that multigym.
34. Further, there is a logical discontinuity in so far as there is no more than a bald assertion that the TRANSFORMA AF1001 is the same multigym marketed in Australia by the Owner under the name “MONSTER G6”. There is no evidence at all of the design features of that multigym.
35. In any event, it is my observation that all of Patent Application No. CN201110022338.3, Utility Patent Application No. CN201120017565.2 and Design Patent Application No. CN201130010610.7 contain essentially identical drawings of a multigym that differs in a number of visual features from the Design which is the subject of the Registration.
36. I add here that more than once when drawing comparisons between the Design and published material, the statement of grounds claims that the published material is identical or substantially similar in overall impression to the registered design (emphasis added). That is not the test. The relevant provisions refer repeatedly to “the design”. The test of entitlement is in my view equivalent to the test for “newness”, rather than the “distinctiveness” test. There is consequentially nothing to make me think that for the purposes of assessing entitlement to the present Design, the Chinese intellectual property described in Exhibits 6-8 is relevant.
37. That leaves only the email trail which I consider to be unreliable from an evidentiary perspective. To the extent it requires consideration, it is only the statement by Nantong Ruilin that the TRANSFORMA AF1001 “is our factory design” which deserves attention and I must weight it along with other statements which indicate that other goods are manufactured by Nantong Ruilin to the Owner’s order (and, it reasonably follows, design).
38. The priority date of the design registration is 27 July 2011. The emails are two years later. They are not nearly contemporaneous evidence of entitlement.
39. The BRUTE FORCE 360PT multigym is shown at The domain name <renouffitnessequipment.com.au> was registered on 26 February 2013. The internet archive known as the “Wayback Machine” does not show any activity at that website before 18 April 2013. I cannot read anything into the Owner’s entitlement at the priority date based on website information almost two years afterwards.
40. The statement of grounds also references a Youtube video made by Renouf Home Fitness which is entitled “360PT Multi-Functional Trainer - Weight Stacks - Smith Machine - Power Rack” at That video was published on 14 May 2012. Again it does little to inform me about entitlement to the Design, which was filed in July 2011.
Onus of proof
41. In reaching my decision, I must apply the civil standard of proof and decide disputed issues on the balance of probabilities[1]. It is the Requestor who bears the onus of proof in that regard[2].
[1] See, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523 at 543-4
[2] See, for example, Stamp v W J Powell Pty Ltd, (1918) 24 CLR 339
42. The following observation in Stack v Davies Shephard Pty Ltd (1996) 34 IPR 117 applies mutatis mutandis to applications made under the Designs Act 2003:
A patent may only be granted to an eligible person (section 15). When granting a patent, the Commissioner normally does not require proof of entitlement; rather the patent is granted on the basis of the prima facie claim to entitlement that the applicant provides in the 'notice of entitlement' required by regulation 3.1(2). In my view, where there is proper cause to query the entitlement of the patentee it is incumbent upon them to provide substantiation of their asserted entitlement to the grant of a patent. Inability to substantiate entitlement must prima facie leave it open to find that the patentee was not entitled to be granted the patent.
43. All that additionally tells me is that should the Owner decide not to contest the Request then it is open to me to make adverse findings based on inferences made by the evidence. In this case however it is the Requestor which fails to make out a prima facie case for revocation based on section 13.
Decision
44. The application under section 51 of the Act is unsuccessful. After assessment of the evidence, I am not satisfied for the purposes of section 52(2) that a person or persons were entitled persons at the time the Design was first registered, and that the original registered owner of the Design, IP Holdings Pty Ltd, was not an entitled person at that time.
Debrett Lyons
Hearing Officer
Trade Marks & Design Hearings
13 September 2013
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