Babyliss Faco SPRL - [2016] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 351553 in the name of Babyliss Faco SPRL – and – examination thereof.

Delegate: Debrett Lyons

Representation: Decision on the written record.

Decision: 2016 ADO 1
Sec. 63 examination: subject design found not to be distinctive over prior art base. Examination completed and registration to be revoked.
Background

Babyliss Faco SPRL (“the Owner”) filed design no. 201314737 (“the Design”) on 19 September 2013, claiming a convention priority date of 10 April 2013 (“the Priority Date”) from Registered Community Design No.002217927-0001 filed with OHIM.
The product to which the Design relates is described as a "Hair styling apparatus". It carries a Statement of Newness and Distinctiveness (“SOND”) which I will turn to later.
The Design was registered as number 351553 on 25 October 2013. The top perspective view and left hand side view of the Design taken from the representations of the registration are shown below.
On 29 November 2013 a request for examination of the Design was filed.
Examination raised grounds for revocation of the Design which were maintained through several official reports and in consequence of which the Owner asked to be heard.
After attempts to agree a hearing date, the Owner’s representatives, Wrays, elected instead to have the matter determined on the written record.
In accordance with directions I set, written submissions were filed together with statutory declarations from Mr Aaron Spowart (“Spowart”) and Ms Pauline Falach (“Falach”).
There is no disputation of the key issue for determination, being whether or not the Design is distinctive over earlier public disclosure of another design originating from the Owner.
The Prior Art Base disclosure
Examination requires the Registrar to have regard to section 65(2)(a) of the Designs Act 2003 (“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.
Newness and distinctiveness are separate requirements. In this case there was no claim that the Design is not new, only that it is not distinctive because it is substantially similar in overall impression to a disclosure in the prior art base. In particular, the Examiner cited another design for essentially the same product as disclosed by Australian Registered Design No. 348730 and European Registered Community Design No. 002115832-0008.
Both cited registrations belong to the Owner. Australian registration No. 348730 has a priority date of 9 October 2012 by reason of section 15(2)(c) of the Act and a convention priority claim based on the filing date of the Registered Community Design No. 002115832-0008. The citations share the same representations and so for the purposes of this decision I will treat AU 348730 as the relevant prior art disclosure (“the Prior Design”). The citation of Registered Community Design No. 002115832-0008 was therefore redundant notwithstanding that its publication date also predates that of the Design.
The Prior Design is a…

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: Babyliss Faco SPRL [2016] ADO 1
Case: [2016] ADO 1
Decision Date: 15 January 2016

CaseChat Overview and Summary

Babyliss Faco SPRL, the owner of a registered design for a hair styling apparatus, challenged a decision by the Registrar of Designs to revoke the registration on the ground that the design was not distinctive over prior art. The dispute was determined by a Delegate of the Registrar of Designs on the written record. The key issue was whether the design was distinctive over earlier public disclosure of another design originating from the owner. The Delegate found that the design was not distinctive, noting that both the design in question and the prior art had similar components and that the differences between them were minimal. The Delegate gave more weight to the similarities between the designs than to the differences between them and found that an informed user would regard the design as lacking distinctiveness in overall impression when compared to the prior design. The Delegate directed that the registration be revoked one month from the date of the decision. If the Registrar was served with a notice of appeal from this decision before that time, the Delegate directed that revocation shall not occur until either the appeal was discontinued or, in the event of a decision by the court, if revocation was contrary to any court order.

Orders