Bitzer Kuehlmaschinenbau GmbH - [2015] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Examination of registered designs 348271, 348344, 348345 and 348346 in the name of Bitzer Kuehlmaschinenbau GmbH.

Delegate:	Debrett G. Lyons
Representation:	Byron Bowman of Griffith Hack, Melbourne
Decision:	2015 ADO 1 Section 63 examination: designs found new and distinctive; single view of prior art considered; s 19 considered; standard of the informed user considered; effect of copying on state of the prior art base considered.

Background

This matter has come before me because Bitzer Kuehlmaschinenbau GmbH (‘the Owner’) has requested to be heard with respect to the examination of registered designs 348271, 348344, 348345 and 348346 (‘the Designs’).

Legislative framework

Registration

Sections 21 to 45 of the Designs Act 2003 (‘the Act’) set out the process by which a design may be registered provided certain formalities are met and if the Registrar is not required to refuse to register the design.[1]

[1] Designs Act 2003 (Cth) ss 39-44

The Designs were all registered in May 2013.

Examination

The Registrar must examine a registered design if any person or a court orders that the Registrar do so.[2] In doing so, the Registrar is to consider whether the registration of a design should be revoked, either because it is not a registrable design as defined by the Act or because there is another ground prescribed in the regulations.[3] If the Registrar is satisfied that a ground for revocation has been made out, the Registrar must give written notice to that effect to the registered owner of the design.[4]

[2] Designs Act 2003 (Cth) s 63(1)

[3] Designs Act 2003 (Cth) ss 65(1), 65(2)(a).

[4] Designs Act 2003 (Cth) ss 66(1), 66(2).

In each of the present matters the examiners were satisfied that a ground for revocation had been made out, and reported accordingly. Representations sufficiently showing each of the Designs, along with the prior art cited in the examiners’ reports (‘the Earlier Designs’) are set out below:

348271 – representations
348271 – prior art
348344 – representations
348344 – prior art
348345 – representations
348345 – prior art
348346 – representations
348346 – prior art

The owner requested a hearing, as it was entitled to do under ss 68(3) and 148. I conducted that hearing in Melbourne on 13 November 2014 as a delegate of the Registrar of Designs.

Registrable design

A design, in relation to a product,[5] means the overall appearance of the product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation) of the product.[6]

[5] Designs Act 2003 (Cth) s 8.

[6] Designs Act 2003 (Cth) ss 5, 7(1).

A design is a registrable design if it is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.[7] The priority date of the Designs is 20 December 2013.

[7] Designs Act 2003 (Cth) s 15(1).

The prior art base consists of:

(a)designs publicly used in Australia; and

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

Case: [2015] ADO 1
Decision Date: 4 February 2015

CaseChat Overview and Summary

Bitzer Kuehlmaschinenbau GmbH, the appellant, challenged the decision of the Registrar of Designs to find registered designs 348271, 348344, 348345, and 348346 new but not distinctive. The appeal was heard by Debrett G. Lyons, a delegate of the Registrar, in Melbourne on 13 November 2014. The appellant argued that the Designs were distinctive in light of differences between the Designs and the earlier designs identified as prior art. The appellant also argued that a single view of the earlier designs was not a reasonable basis for inferring an overall impression of the design. The appellant further argued that the prior art base was crowded and this would lead informed users to appreciate the Designs as distinctive. The appellant submitted that copies of the earlier designs published by a competitor should form part of the prior art base.

The delegate found that the Designs were new and distinctive. The Designs were new because there was at least some apparent difference between the Designs and the earlier designs. The Designs were distinctive because, when compared with the prior art base, the Designs were substantially different in overall impression. The delegate found that a single view of the earlier designs was a reasonable basis for inferring an overall impression. The delegate also found that the prior art base did not include the competitor’s copies of the earlier designs because they were likely to have been published after the priority date of the Designs. The delegate found that the Designs were substantially different in overall impression because there were a number of important differences between the Designs and the prior art. The Designs were distinctive when assessed by the standard of the informed user, who would have a focus on function and a lesser focus on form.

The Designs were distinctive in relation to registered designs 348271, 348344, 348345, and 348346. The delegate issued a certificate of examination for each of the Designs.

Orders