Clipex IP Ltd v GH PTM Pty Ltd trading as Griffith Hack - [2022] ADO 3

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Request for examination by GH PTM Pty Ltd trading as Griffith Hack of 22 designs all registered in the name of Clipex IP Limited.

Delegate:	Nicholas Barbey
Representation:	Requestor: GH PTM Pty Ltd trading as Griffith Hack Owner: Ben Fitzpatrick of counsel instructed by Davis IP
Decision:	2022 ADO 3 Designs Act 2003 (Cth) – third party request for examination under s 63 of the Act of 22 design registrations – section 19 considered – designs new and distinctive over the prior art base – certificates of examination to issue.

Background

Clipex IP Ltd (‘Owner’) is the owner of the following 22 Australian design registrations (collectively ‘Registrations’):[1]
[1] Relevant details and representations of each design registration are listed in Annexure A to this decision.

Design number	Representation	Product name	Priority date	Short title
201912874	Steel post	27 May 2019	874 Design
201914672	Steel post	27 May 2019	672 Design
201914673	Steel post	27 May 2019	673 Design
201914674	Steel post	27 May 2019	674 Design
201914677	Steel post	27 May 2019	677 Design
201914678	Steel post	27 May 2019	678 Design
201914685	Steel post	27 May 2019	685 Design
201914686	Steel post	27 May 2019	686 Design
201914687	Steel post	27 May 2019	687 Design
201914688	Steel post	27 May 2019	688 Design
201914689	Steel post	27 May 2019	689 Design
201914691	Steel post	27 May 2019	691 Design
201914692	Steel post	27 May 2019	692 Design
201914693	Steel post	27 May 2019	693 Design
201914694	Steel post	27 May 2019	694 Design
201914695	Steel post	27 May 2019	695 Design
201914696	Steel post	27 May 2019	696 Design
201914698	Steel post	27 May 2019	698 Design
201914699	Steel post	27 May 2019	699 Design
201914700	Steel post	27 May 2019	700 Design
201914701	Steel post	27 May 2019	701 Design
201914702	Steel post	27 May 2019	702 Design

Each of the Registrations include the following Statement of Newness and Distinctiveness (‘SoND’):
Newness and distinctiveness reside in the pattern or ornamentation as applied to a ground anchoring region of a steel post, as represented by grayscale shading in the accompanying representations, wherein: the grayscale shading represents any colour or texture that contrasts with the colour or texture of the unshaded region; and, when considering newness and distinctiveness, little or no weight is to be given to the shape or configuration of the post.
Pursuant to s 63 of the Act, GH PTM Pty Ltd trading as Griffith Hack[2] (‘Requestor’) requested examination of all the Registrations. Each request was accompanied by 5 prior art documents which, in the Requestor’s view, rendered each of the Registrations neither new or distinctive when compared to the prior art base. The Owner and the Requestor paid the relevant fees and the Registrations were subsequently examined.
[2] The original requests for examination were filed by Watermark Intellectual Property Pty Ltd. However, by letter dated…

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: [2022] ADO 3
Decision Date: 5 August 2022

CaseChat Overview and Summary

Clipex IP Ltd brought a proceeding against GH PTM Pty Ltd, trading as Griffith Hack, in the Federal Court of Australia. The dispute centred on the validity of 22 design registrations held by Clipex. Clipex sought to have the designs examined by a third party to determine their validity, under section 63 of the Designs Act 2003 (Cth). Clipex contended that the designs were new and distinctive, while Griffith Hack argued that the designs were not valid as they were not new or distinctive over the prior art base.

The court was tasked with determining whether the designs in question were new and distinctive, and thus eligible for examination. The court considered the provisions of section 19 of the Designs Act 2003 (Cth), which sets out the criteria for novelty and distinctiveness. The court had to evaluate the designs against the prior art base and determine if they met the statutory requirements. The court also considered whether the request for examination was valid and if the proper procedures were followed.

The court found that the designs were new and distinctive over the prior art base, and thus eligible for examination. The court concluded that the request for examination was valid and that the proper procedures had been followed. The court further determined that the certificates of examination should issue in favour of Clipex. The court held that the designs met the statutory requirements for novelty and distinctiveness and that the request for examination was properly made.

The final orders of the court were that the certificates of examination should issue in favour of Clipex for the 22 design registrations. The court found that the designs were new and distinctive and that the request for examination was valid. The court further ordered that the costs of the proceeding be paid by Griffith Hack. The decision provides clarity on the criteria for examining design registrations and the proper procedures for making a request for examination under the Designs Act 2003 (Cth).

Orders