Baker v Brown

[1989] ADO 1

In the Matter of the Designs Act 1906

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In the Matter of Registered Design No. 93105 in the Name of EDWARD JOSEPH BAKER and ERROL FRANKLIN PRIEM

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In the Matter of Application under Section 27B for Restoration

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In the Matter of Opposition thereto by PHILLIP GEORGE BROWN and ROSLYN MARGARET BROWN.

DECISION OF AN ASSISTANT REGISTRAR OF DESIGNS:
Background
         Design No. 93105, for a bull‑bar, was lodged on 13 December 1985 and registered on 17 July 1986.  No application for extension of term was lodged within a period of 12 months from the date of registration so the registration ceased.  On 1 March 1988 an application for restoration was lodged in the names of the registered owners Edward Joseph Baker and Errol Franklin Priem.  The grounds stated on the application are as follows:

"During almost all of the period between the date of registration of the said design and the due date for extension of the period of registration, the Design Registration was in the hands of a patent attorney, on whom we relied to inform us of due dates.  So far as we are aware, at no time did the patent attorney inform us that action had to be taken to extend the period of registration and we were unaware that any action was required in respect of the Design Registration.  It was never our intention that the Design Registration be allowed to expire."

The application for restoration was accompanied by declarations from each of the registered owners.  Mr. Baker in his declaration states that their patent attorney at the time, Mr. Halford of Halford & Maxwell, "was acting in respect of the Design Registration until around the middle of 1987, when he ceased to act ... so far as I am aware, at no time did Mr. Halford advise that the Design Registration was due for extension".  He goes on to explain that in June and July 1987 he was involved in the relocation of two factories which occupied much of his time and that in November 1987, when he became aware that the design "had to be extended", he "immediately contacted the Designs Office to enquire about the position and to find out what could be done".  (An application for extension of term, with an accompanying declaration, was lodged on 7 December 1987; no action could be taken on this application because the registration had ceased on 17 July 1987, and subsequently the registered owners' new patent attorneys lodged the abovementioned application for restoration.).  Mr. Baker finally states "it was always my intention to maintain the Design Registration in force and to take any action necessary to that end".  In his declaration Mr. Priem agreed with the statements in Mr. Baker's declaration.
         Sections 27B and 27C of the Designs Act relate to restoration: sub‑section 27B(1) refers to the conditions under which an application may be made, and sub‑section 27B(2) reads as follows:

"An application under sub‑section (1) shall contain a statement of the circumstances that led to no application for extension being made in accordance with sub‑section 27A(3) or (14), as the case may be, and the Registrar shall, if he is satisfied that the failure to make such an application was unintentional and that no undue delay has occurred in the making of the application under sub‑section (1), advertise the application under sub‑section (1) in the Official Journal but, if he is not so satisfied, shall dismiss the application under sub‑section (1)."

On a direction from the Senior Assistant Registrar of Designs the application for restoration was advertised in the Official Journal on 19 May 1988.  A notice of opposition to the restoration, under sub‑section 27B(3), by Phillip George Brown and Roslyn Margaret Brown, was lodged on 10 August 1988.  No grounds were stated on the notice of opposition, but reference was made to an action for infringement of the design brought by the owners against the abovementioned opponents before the Supreme Court of New South Wales Equity Division (Supreme Court action No. 1506 of 1987).  Evidence‑in‑support of the opposition was lodged on 23 August 1988; this comprises declarations by the said Mr. Brown and by Mr. John Douglas Forster, patent attorney for the opponents.  These declarations generally relate to alleged use of a bull‑bar of the same design as that of Registered Design No. 93105, before the priority date of 13 December 1985.  Evidence‑in‑answer was lodged on 14 November 1988; this comprises a declaration by the said Mr. Priem, arguing that the bull‑bar referred to by Mr. Brown is not identical with the bull‑bar of the registered design and that the latter corresponds to artistic works in which copyright subsists.
         The matter came to hearing in Sydney on 22 March 1989; the registered owners were represented by Mrs. Kerry Moore Chrysiliou and the opponents were represented by the said Mr. Forster.  Mr. Priem was present at the hearing, and Mr. Forster was assisted by Mr. David Hughes.  Immediately subsequent to that hearing, a second hearing was held in the same session relating to matters of novelty under sub‑sections 27A(4) and 27A(9); those matters are dealt with in a separate concurrent decision.
Submissions
         Both parties were invited to make submissions on the grounds of opposition : Mr. Forster stated that the opposition was based on the grounds of validity of the design but Mrs. Chrysiliou submitted that such grounds were not relevant to opposition to restoration proceedings which should be restricted to the grounds of intention and delay pursuant to sub‑section 27B(2).  Mr. Forster suggested that the Designs Act is silent on the grounds of restoration, that it is not stated in the Act that restoration cannot be opposed on validity, that this matter has not been considered in a decision of the Registrar and that any doubt should be resolved in the opponent's favour and the evidence heard.  Mrs. Chrysiliou argued that the Designs Act is a form of enabling legislation which, in sections 27A, 28, 32 and 39, indicates when the validity of a design can be questioned and therefore validity is not to be considered on restoration since those grounds are not specifically referred to in sections 27B or 27C.  She also referred me to similarities between the Designs Act and the Patents Act.   Sub‑section 97(2) of the Patents Act reads:

"The application shall contain a statement of the circumstances which led to the failure to pay the prescribed fee within the prescribed time, and if it appears from the statement that the failure was unintentional, and that no undue delay has occurred in the making of the application, the Commissioner shall advertise the application in the Official Journal."

Mrs. Chrysiliou submitted that current procedures for restoration of patents are confined to the matters of intention and delay and do not involve matters of validity. She referred me to the decision in Utting v. Clyde Industries Ltd. 8 IPR 16.
Decision
         It is Office practice that matters involving validity of a design considered on an application for extension of term under sub‑section 27A shall be strictly ex‑parte matters; i.e. an informant who lodges a notice under sub‑section 27A(4) is not heard on the matter, according to the Deputy Registrar's guidelines (1985):

"The statutory procedure prescribed for determinations under s.s.27A(9) is an ex parte procedure involving the registered proprietor and the Registrar.  There is no provision for intervention by a person lodging a notice under s.s.27A(4)."

These matters were to be dealt with ex‑parte, in the hearing to be held subsequent to the restoration hearing.  Thus, I decided at the restoration hearing that it would not be appropriate for the opponents to make submissions on the grounds of validity since this would in effect circumvent the section 27A ex‑parte procedures of the Office.
         In his book The Law of Intellectual Property, Staniforth Ricketson comments on the grounds that can be raised by an opponent to restoration; paragraph 19.20 reads:

"Where an application for restoration is advertised, and no notice of opposition is received, restoration is automatic provided that the applicant complies with the conditions set out in [19.18] above.  It is only where a notice of opposition is received that the Registrar has discretion to refuse the application.  It is not stated what matters may be raised on opposition, but it is submitted that these would include objections going to the owner's entitlement to apply for restoration, e.g. because someone else is now the owner of the design.  They would not include material going to the novelty or originality of the design before its priority date as these issues can only be raised by an opponent at the end of the first 12 months of the design's registration.  Nor would they include objections by an opponent that he has changed his position as a result of the design's lapse: this is because provision is made for the grant of licences to such persons (see [19.22]).  Accordingly, the matters which may be raised by an opponent on a restoration application seem very limited in scope."

Ricketson's comments are consistent with the notion that grounds of validity are not appropriate for opposition to restoration.
         After I decided this matter at the hearing, the opponents were given an opportunity to reconsider their case, but no submissions were made on the grounds specified in sub‑section 27B(2).  Thus, with regard to restoration, I do not think that it is necessary for me to reconsider the circumstances and the evidence since the Registrar has already recommended advertisement of the opposition for restoration and I have not been presented with any argument as to why I should change this recommendation.  Thus I find that Registered Design No. 93105 is fit for restoration insofar as the matter of section 27B is concerned, but I cannot restore the registration until the matter dealt with under section 27A is settled.  In my concurrent decision on the design owners' application for extension of term under section 27A I have found that there is prima facie evidence that the design is not new or original, and I have allowed the owners 30 days as a final opportunity to submit further evidence.
Costs
         Both parties made submissions with regard to costs: Mrs. Chrysiliou claimed costs in accordance with the scale of costs in opposition proceedings, whilst Mr. Forster submitted that the opposition was not frivolous, that the matter of whether validity is an appropriate ground is not that clear cut and that these matters should be taken into account with regard to costs.
         Costs in opposition proceedings include costs associated with preparation of evidence.  In this case I consider that the opponents' evidence‑in‑support and the design owners' evidence‑in‑
answer, in being directed to matters of validity, are not relevant to the grounds upon which restoration may be opposed.  I award costs in favour of the design owners, since my decision is in their favour, but I exclude the costs associated with their evidence‑in‑
answer, because of the lack of relevance of that evidence.

(J.I. WELSH)

Attorneys for the design owners: Chrysiliou Moore Chrysiliou, Sydney