Clipex IP Ltd v GH PTM Pty Ltd trading as Griffith Hack
[2022] ADO 3
•5 August 2022
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 17 May 2022, the Requestor informed IP Australia that this entity was ‘integrated into Griffith Hack in 2019 and no longer exists’.
The examinations resulted in no grounds for revocation having been established in respect of any of the Registrations. A Statement of Reasons (‘SOR’) for each examination outcome was issued and the Requestor was given an opportunity to request a hearing if it objected to the examiner’s intention to issue certificates of examination against each of the Registrations. The Requestor exercised its right to be heard in respect of all the Registrations.
Directions for filing evidence and submissions were subsequently issued to the parties. In accordance with those directions, each party filed Evidence in Support (‘EIS’) and Evidence in Answer (‘EIA’). The Owner objected to certain aspects of the Requestor’s EIA and requested permission to file Evidence in Reply (‘EIR’). This request was granted by a delegate of the Registrar of Designs (‘Registrar’) and the Owner duly filed EIR. In turn, the Requestor sought to file EIR on the basis that the Owner’s EIR introduced new evidence. This request was declined by the delegate who informed the Requestor that a compelling case needed to be established in order to justify any addition to the properly filed evidence. Prior to the hearing, the Requestor filed EIR accompanied by submissions which will be addressed below.
The Registrar arranged for all 22 examination requests to be heard in a single hearing. The Requestor filed submissions on 26 April 2022 (‘Requestor’s Submissions’) and the Owner filed submissions on 3 May 2022 (‘Owner’s Submissions’). As a delegate of the Registrar, I heard the matter by video conference on 6 May 2022. Robert Wulff of Griffith Hack presented submissions on behalf of the Requestor and Ben Fitzpatrick of counsel presented submissions on the Owner’s behalf.
Legislative framework
Pursuant to s 63(1) of the Act, a registered design must be examined if any person requests, or a court orders, the Registrar to do so. Examination of a design requires the Registrar to consider whether a design should be revoked because, inter alia, it is not a ‘registrable design’.[3]
[3] Act s 65(2)(a).
A ‘registrable design’ is a design that is ‘new’ and ‘distinctive’ when compared with the ‘prior art base’ for the design as it existed before the priority date of the design.[4] In this matter, all the Registrations claim a priority date of 27 May 2019 (‘Priority Date’). The ‘prior art base’ relevantly includes designs publicly used in Australia and designs published in a document within or outside Australia.[5]
[4] Ibid s 15(1).
[5] Ibid s 15(2).
What constitutes a ‘new’ and ‘distinctive’ design is defined in s 16 of the Act which relevantly provides:
Designs that are identical or substantially similar in overall impression
(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).
A design is ‘new’ unless it is an exact copy of a design that forms part of the prior art base. The absence of a single visual feature, irrespective of its significance, in either of the designs under comparison will therefore be sufficient to establish that a design is ‘new’.
Determining whether a design is ‘distinctive’ requires a holistic assessment of the factors prescribed in s 19 of the Act. This provision relevantly provides:
Factors to be considered in assessing substantial similarity in overall impression
(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design--have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
Onus
As the party seeking to establish that a ground for revocation exists, the burden lies with the Requestor to establish, on the balance of probabilities, that each of the Registrations are not registrable designs.[6]
[6] See, eg, Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd [2021] FCA 208, [35]–[37] (Greenwood J).
Evidence
The following declarations were filed in this matter:
| Owner’s EIS |
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| Requestor’s EIS |
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| Owner’s EIA |
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| Requestor’s EIA |
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| Owner’s EIR |
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| Additional evidence - Requestor’s EIR |
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Owner’s EIS
Mr Julius is a co-owner of BSJ Rural Contracting (‘BSJ’) which he founded approximately 15 years ago. BSJ ‘specialises in general livestock and exclusion fence installations’ and Mr Julius’ role includes ‘acquiring and installing steel fence posts’.[7] Prior to establishing BSJ, Mr Julius was a station hand for approximately 30 years and part of this role involved installation of farmland fencing.
[7] Julius Declaration, [3].
According to the Julius Declaration, as at the Priority Date, the ‘vast majority of steel posts used in rural fencing in Australia consisted of a three flanged Y shape posts known as “star pickets”’.[8] Mr Julius states that differences exist between Y shaped posts notwithstanding that they all consist of the same fundamental Y shape. For example, the size and thickness of the post flanges can be uniform or they can differ in size and/or thickness depending on the type of fencing to be installed. Y shaped posts can also differ in overall length with shorter posts generally used for animal grazing fencing and longer posts used for exclusion fencing.
[8] Ibid [8]. Mr Julius comments that ‘there was also some use of galvanized round (or cylindrical) posts’ on non-farming commercial properties.
Mr Julius explains that the ‘numbers and types of apertures (also known as holes) and keepers (also known as latches)’[9] as well as their location on the post will vary depending on the purpose of the fencing. For example, the number of holes in a post can vary from 8 through to 30 depending on how close the wiring needs to be spaced. Mr Julius declares that steel posts typically have round shaped holes but ‘elongated shaped holes’ are also used.
[9] Ibid [11]–[14].
According to the Julius Declaration, ‘[a]ll steel posts have some form of corrosion resistance’.[10] This may be achieved by applying a galvanised coating or a bituminous paint coating over the entirety of the post. Another method of providing corrosion resistance is to apply a coating to the lower portion of a post which results in the post having a ‘two toned or two coloured appearance’.[11] Mr Julius also observes that stabilising plates are an important feature of steel posts because they have a functional purpose of preventing posts from sinking into the ground.
Requestor’s EIS
[10] Ibid [18].
[11] Ibid.
The Wulff Declaration alleges that each of the Registrations have ‘copied known steel post designs and has simply applied grayscale shading to a ground anchoring region of each steel post’.[12] To support this, the following prior art is exhibited (collectively ‘Prior Designs’):
[12] Wulff Declaration, [4].
| Prior Art | Representation | Short title |
| Australian design no. 201012179 | PA1 | |
| Australian design no. 201211798 | PA2 | |
| ‘Wikipedia.org – “Steel fence post”’ | PA3 | |
| ‘Farmers Weekly internet publication’ | PA4 | |
| ‘Google Images search – “part painted T posts”’ | PA5 |
The Wulff Declaration contends that each of the Registrations, when properly interpreted, are for ‘a “pattern or ornamentation” design’.[13] This interpretation is said to be consistent with the SoND for the Registrations which emphasise the shaded, ground engaging region, of each steel post.[14] On this basis, Mr Wulff submits that for each of the Registrations, ‘the “design” is not the steel post, nor is it the shape or configuration of the steel post, nor is it the individual structural features of the steel post’.[15]
[13] Ibid [5].
[14] Ibid.
[15] Ibid (emphasis in original).
The Wulff Declaration also dissects the SOR provided in support of the intention to certify the Registrations.[16] Attention is drawn to a perceived deficiency in the rationale provided – namely, the examination was conducted ‘on the assumption that the shape and configuration of the “steel post” (the product in each of the [Registrations]) was distinctive over the prior art’.[17] Exhibit 3 to the Wulff Declaration contains results obtained from searches of the prior art base which, in Mr Wulff’s opinion, illustrate ‘that the shape and configuration of each of the [Registrations], including the combination of features, was known and published before the [P]riority [D]ate’.[18]
[16] As noted at [9] of the Wulff Declaration, the SOR provided was ‘effectively identical’ for each of the Registrations.
[17] Wulff Declaration, [12].
[18] Ibid [14].
The remainder of the Wulff Declaration contains submissions engaging with the factors set out in s 19 of the Act. It posits that the Prior Designs ‘disclose the same pattern or ornamentation features in the same locations and on the same or similar steel posts to that of the steel posts of the [Registrations]’.[19] Mr Wulff submits that ‘the “shape and configuration” features of each of the [Registrations] was already part of the prior art base’[20] and should be ‘disregarded when applying the factors set forth in Section 19’.[21] A correct analysis under s 19 of the Act, so the argument goes, should ‘be limited to features of “pattern or ornamentation” of each of the [Registrations]’.[22] In this context, Mr Wulff asserts that ‘[i]t does not matter that some of the steel posts of the [Registrations] have a different overall shape to the [Prior Designs]’ because '[t]he “pattern or ornamentation” features are the same and/or are substantially similar’.[23]
Owner’s EIA
[19] Ibid [41].
[20] Ibid [42].
[21] Ibid [17], [47].
[22] Ibid [42].
[23] Ibid [48].
The Pickard Declaration annexes a report prepared by Dr Pickard which compares each of the Registrations to designs contained in the prior art base[24] (‘Pickard Report’) as well as some of the Prior Designs. Dr Pickard describes himself as being ‘a consultant on the heritage of rural fencing since 2011’ and an independent researcher that has ‘written a number of articles on fencing in Australia’.[25]
[24] The prior art base under consideration is based on the website links disclosed in Exhibit 3 to the Wulff Declaration.
[25] Pickard Declaration, [1]–[4].
The Pickard Report outlines several reasons as to why none of the Registrations are identical or substantially similar in overall impression to the any of the prior art base designs. Dr Pickard’s conclusions are based on his understanding of chapter 9 of the Designs Examiners' Manual of Practice and Procedure (‘Manual’) in combination with his own personal knowledge and observations.
Requestor’s EIA
According to the Lourie Declaration, Waratah Fencing Products (‘Waratah’) is ‘the market leader for fencing products in Australia’.[26] Through his role at Waratah, Mr Lourie has acquired ‘an intimate and extensive knowledge of fencing products promoted, sold and made available in Australia’ and is aware of ‘current market conditions and trends’.[27] Mr Lourie declares that the application of an additional coating (be it partial or in full) to the galvanised coating of a steel post has ‘been in use in the Australian steel fence post market for many decades’[28] as a way of counteracting corrosive soils.
[26] Lourie Declaration, [2].
[27] Ibid [3]–[4].
[28] Ibid [16].
Mr Lourie provides reasons as to why none of the Registrations are new or distinctive when compared to the Prior Designs. Relevantly, Mr Lourie understands the SoND which accompanies each of the Registrations as instructing him to focus on ‘the pattern or ornamentation as applied to a ground anchoring region of a steel post’[29] and to ‘disregard differences in shape or configuration’ between the Registrations and the Prior Designs.[30] Mr Lourie opines that the shape or configuration of each of the Registrations is well known to himself and many other people in the fencing industry.[31] Indeed, he ‘could immediately recognise and identify the source of each post’ in the Registrations.[32] To this end,
Exhibit RL-3 contains Mr Lourie’s comments on the alleged provenance of each steel post disclosed in the Registrations.[29] Ibid [33].
[30] Ibid [33], [42].
[31] Ibid, [22], [48].
[32] Ibid [84].
The Lourie Declaration also discusses the SOR. In Mr Lourie’s opinion, the SOR erroneously focuses on the shape and configuration of each of the Registrations and fails to give due weight to the pattern or ornamentation of the shaded region of the post in each of the Registrations. Mr Lourie also applies his understanding of the factors detailed in s 19 of the Act to a comparison of the Registrations against the Prior Designs. Having regard to these factors, Mr Lourie declares that he is ‘even more convinced that none of the [Registrations] are distinctive’.[33]
[33] Ibid [55].
The Lourie Declaration responds to the Julius Declaration. Relevantly, Mr Lourie clarifies that not all steel posts have some form of corrosion resistance and points out that a post ‘will be highly susceptible to corrosion out in the field of application’ unless it has some basic form of coating.[34] Mr Lourie acknowledges that stabilising plates are a feature that ‘can change the appearance of a post’ but highlights that stabilising plates are ‘well-known features of American T-posts and have been well known for many years prior to 27 May 2019’.[35]
[34] Ibid [66].
[35] Ibid [68].
The Lourie Declaration also comments on the Pickard Declaration. Mr Lourie queries Dr Pickard’s expertise in relation to steel posts and whether Dr Pickard fully comprehends the intricacies of the Manual. Criticism is levelled at the Pickard Report including the incomplete nature of the prior art considered as well as the weight attributed to differences in the ‘shape/configuration’ features between the relevant designs. In Mr Lourie’s opinion, the ‘shape/configuration’ features of each of the Registrations should ‘be given no weight’[36] in assessing their distinctiveness. Mr Lourie submits that Dr Pickard’s consideration of such features means that the Pickard Report is fundamentally flawed.
[36] Ibid [87].
The remainder of the Lourie Declaration introduces further prior art. Specifically,
Exhibit RL-4 contains two photographs of steel posts with ‘additional coatings on a lower ground-anchoring region’ that were trialled in New South Wales in 2005.[37] Meanwhile, Exhibits RL-5 to RL-8 contain photographs of posts which have a ‘two-toned appearance’ that were purportedly trialled in various Australian locations between 2006 and 2018. Mr Lourie also refers to a ‘European-type trellis post’ which displays a ‘two-toned appearance’ and provides a website link to archived photographs of this post.
Owner’s EIR
[37] Ibid [102].
The Olsson Declaration challenges the prior art introduced by the Lourie Declaration. Mr Olsson disputes that the trialled posts contained in Exhibits RL-4 to RL-8 of the Lourie Declaration were publicly used in Australia. The implication being they do not form part of the relevant prior art base for the Registrations.[38] In Mr Olsson’s experience, ‘it is the usual practice for some form of non-disclosure or confidentiality agreements’ to be used during these trials.[39] The Olsson Declaration details commercial and non-commercial reasons as to why the trials disclosed in the Requestor’s EIA are likely to have been conducted in confidential circumstances. However, for the purposes of this decision, it is not necessary to summarise these in detail.
[38] Act s 15(2)(a) which provides that the ‘prior art base for a design (the designated design) consists of designs publicly used in Australia’.
[39] Olsson Declaration, [20].
The Olsson Declaration also responds to the nature of the photographs that form part of the Requestor’s EIA. Broadly speaking, Mr Olsson submits that the photographs are not time stamped and only partially disclose the exhibited post(s). As such, visual features including the number of holes (if any), shape, length and/or extent of coating on the exhibited post(s) cannot be discerned with any certainty. On this basis, Mr Olsson concludes that the prior art disclosed in the Requestor’s EIA is dissimilar in appearance and overall impression to each of the Registrations.
Additional evidence - Requestor’s EIR
The Fabien Declaration responds to allegations made in the Olsson Declaration regarding confidentiality agreements and practices associated with developing and trialling new products. Mr Fabien declares that the product trials disclosed in Exhibits RL-4 to RL-8 of the Lourie Declaration were not subject to confidentiality agreements.[40]
[40] Fabien Declaration, [8], [10].
Overall, nothing in the Fabien Declaration affects the outcome of this decision. This is particularly so given it has not been necessary to determine whether the trials disclosed in Exhibits RL-4 to RL-8 of the Lourie Declaration constitute public use of relevant designs in Australia. As such, I give the additional evidence no weight.
Discussion
Before turning to consider whether each of the Registrations are new and distinctive, it is prudent to discuss 2 preliminary matters that have had significant bearing on how the parties have framed their submissions. These matters pertain to the scope of the Registrations and the nature of the prior art relied upon by the Requestor.
Scope of the Registrations
A central issue in this matter is the impact of the SoND on the scope of the Registrations. The Act mandates that if a design application includes a statement of newness and distinctiveness, then particular regard must be given to the visual features of the design which are identified as being new and distinctive.[41] It is common ground that regard must be given to the SoND. Where the parties diverge is with respect to how the SoND should be interpreted and what affect its presence has on the scope of the Registrations.
[41] Act s 19(2)(b)(i).
The Requestor’s position is that the scope of the Registrations is exclusively confined to the pattern or ornamentation features of each steel post disclosed. Reliance is placed on the SoND which stipulates that ‘newness and distinctiveness reside in the pattern or ornamentation as applied to a ground anchoring region of a steel post’ and ‘little or no weight is to be given to the shape or configuration of the post’. On this basis, the Requestor asserts that consideration should only be given to the visual features of pattern or ornamentation in each of the Registrations. The corollary being that their shape or configuration should be disregarded.[42]
[42] Requestor’s Submissions, [9].
Conversely, the Owner contends that the scope of the Registrations is not limited to the pattern or ornamentation features of each steel post disclosed. It asserts that the Requestor’s position is ‘fundamentally misconceived’ and premised on an artificial construction of the SoND.[43] The Owner highlights that, by definition, a design ‘in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product’.[44] A ‘visual feature’ is defined in the Act as ‘in relation to a product, includes the shape, configuration, pattern and ornamentation of the product’.[45] In the Owner’s opinion, the reference to ‘overall impression’ in s 19 of the Act further illustrates that the product must be considered as a whole and ‘not just that part of the product bearing the particular visual features of the design’.[46] In this context, the Owner submits that the SoND provides some weight to the visual features but it does not permit specific visual features to be excluded from consideration entirely.[47]
[43] Owner’s Submissions, [92]–[94].
[44] Act s 5 (definition of ‘design’).
[45] Ibid s 7.
[46] Owner’s Submissions, [100].
[47] Ibid [96].
In my view, the Owner’s position is preferable. The statement of newness and distinctiveness was introduced in the current Act and replaced, inter alia, the statement of monopoly that existed under the Designs Act 1906 (Cth).[48] As the name suggests, a statement of newness and distinctiveness is intended to be used to identify new or distinctive visual features of a design. In the context of s 19 of the Act, a statement of newness and distinctiveness serves to inform the overall visual impression conveyed by a design but its mere presence is not determinative. In contrast to the statement of monopoly, a statement of newness and distinctiveness does not operate as a mechanism by which to disclaim visual features or disregard visual features not expressly identified within it.[49] On its face s 19(2)(b) of the Act requires particular regard to be paid to visual features identified in a statement of newness and distinctiveness, but this must be considered in the context of the design as a whole. Applying the ordinary meaning of this provision to the SoND at hand, particular regard is to be given to the pattern or ornamentation features but some regard must be given to the shape or configuration features. Pursuant to s 15AB(1)(a) of the Acts Interpretation Act 1901 (Cth), guidance to confirm this ordinary meaning may be drawn from the Australian Law Reform Commission’s example regarding the potential introduction of a statement of newness and distinctiveness:
For example, if a cup is designed with a new and distinctive handle, the design owner will be able to register the design of the cup and identify the handle as the new and distinctive feature for which protection is sought. If a competitor takes the handle and places it on a differently shaped cup, the court will be directed to consider when determining whether the exclusive right has been infringed whether the design of the new cup is substantially similar in overall impression to the design of the old cup, paying particular attention to the designs of the handles in each case but not disregarding other parts of the cups. The design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.[50]
[48] Designs Act 1906 (Cth) s 4 (definition of ‘statement of monopoly’) provided that a ‘statement of monopoly, in relation to a design, means a statement relating to the representations of an article to which the design is applied that indicates … (b) those features of the representations that are to be disregarded in considering the extent of the monopoly protection.
[49] See, eg, Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743, [41] (Yates J) (‘Multisteps’).
[50] Australian Law Reform Commission, Designs (Report No 74, 1995) para 6.21 (emphasis added).
The Requestor’s position is akin to comparing the cup handles in the above example insofar as it essentially submits that the pattern or ornamentation of the ground anchoring region of the steel post should be considered in isolation. I do not accept this. Here, all the Registrations are in respect of a ‘steel post’. They are not for a component part that is a product in its own right, for example, in respect of a ‘steel post anchor’ or a ‘reinforcing plate of a steel post’. It is true that the SoND claims that the new and distinctive visual features reside in ‘the pattern or ornamentation as applied to a ground anchoring region of a steel post’ in each of the Registrations. However, consistent with the above example, this does not mean that the residual visual features are to be wholly disregarded. Rather, such residual visual features should be given diminished attention. Accordingly, there is no cogent basis to read down the scope of the Registrations in the manner advanced by the Requestor.
Nature of the prior art
The Requestor’s Submissions state that reliance is placed on the Prior Designs together with the material contained in Exhibits RL-3 to RL-9 of the Lourie Declaration as the relevant items of prior art in this matter.[51]
[51] Requestor’s Submissions, [10].
The Prior Designs are produced at [18] of this decision. In relation to the material contained in the Exhibits of the Lourie Declaration, the relevant documents are set out in Annexure B to this decision. By relevant documents, I note that some of the Exhibits do not contain any material that is capable of being used for comparative purposes. For example, Exhibit RL-3 contains a table setting out the Registrations and Mr Lourie’s comments and Exhibit RL-9 contains a written opinion issued by the International Searching Authority in respect of Patent Cooperation Treaty application number ‘PCT/AU2020/050521’ that is devoid of any imagery.
Meanwhile, Exhibit RL-5 contains the findings of ‘Metallurgical Investigation – No 061548’ and includes photographs of a blistered epoxy coating of a fence post. The photographs are taken close up to the post such that they plainly cannot assist the Requestor’s case.[52] Finally, the Lourie Declaration provides a website link[53] which allegedly contains a ‘European-type trellis post’. In Mr Lourie’s view, this is at least substantially identical to the 687 Design. However, it is not appropriate for a delegate of the Registrar to navigate links to locate possible prior art on a website given such links may change or redirect over time. It is incumbent upon the party to file any material, such as screenshots of the relevant part of the website, during the evidence stages if reliance is to be placed on same.
[52] An illustrative example is set out in Annexure C to this decision.
[53] <>
The Owner’s Submissions are highly critical of the prior art. Specifically, the Owner points out that it ‘is readily apparent that the posts shown in the various photographs are not all the same’[54] and the general nature of the photographs is such that, in some instances, it is not possible to determine the length or shape of the post. Nor is it possible to ascertain the totality and arrangement of the apertures in the post or whether the post has any additional coating applied to it.[55]
[54] Owner’s Submissions, [113].
[55] See, eg, Owner’s Submissions, [114], [116], [121], [141], [151], [153], [200].
In my assessment, there is considerable merit in the criticisms levelled at the prior art notwithstanding the fact that some of the prior art establishes that partially coating a post was a known practice before the Priority Date. Whilst it is by no means a requirement that the alleged prior art disclose each of the Registrations in full, many examples of the prior art relied on suffer deficiencies that are fatal to their capacity to form the basis of a valid ground for revocation. Deficiencies arise from the fact that the photographs of the posts are obscured, incomplete or simply fail to disclose sufficient details to render any of the Registrations invalid.
With the above in mind, I have no hesitation in finding that PA3 and PA4 do not warrant further consideration. At their highest, each example of prior art therein merely discloses a post end which is partially coated. For similar reasons, the examples of prior art disclosed in Exhibit
RL-7 as well ‘Fig.2’ and ‘Fig.7’ to ‘Fig.9’ in Exhibit RL-8 may also be dismissed. Meanwhile, the examples of prior art disclosed in PA5, Exhibit RL-4, Exhibit RL-6 and ‘Fig.4’ to ‘Fig.6’ in Exhibit RL-8 show posts which are partially coated. However, the posts are displayed from such a distance that, even with the assistance of digital magnification, it is impossible to discern with any degree of confidence the relevant visual features of same. For this reason, I am satisfied that each of the Registrations are new and distinctive over these alleged prior art designs.For ease of reference, the residual prior art to be considered in this decision is set out below (collectively ‘Citations’):
Prior Art
Representation
Short title
Australian design no. 201012179
PA1
Australian design no. 201211798
PA2
‘Fig. 1’ in Exhibit RL-8
PA6
‘Fig. 3’ in Exhibit RL-8
PA7
Newness
The Requestor alleges that the 672, 673, 677, 686, 689, 691, 694 and 702 Designs are not new because each is ‘identical to the designs shown in Exhibit RL-8’.[56] , However, for the aforementioned reasons, I am of the view that consideration is only required to be given to PA6 and PA7.
[56] Requestor’s Submissions, [46]–[54].
The Requestor’s allegation as to newness is easily disposed of given neither PA6 or PA7 disclose additional views of the prior art. As such, I am unable to conclude that either PA6 or PA7 is identical to any of the particularised designs.[57] Consequently, I am satisfied that the Registrations and, in particular, the 672, 673, 677, 686, 689, 691, 694 and 702 Designs are ‘new’ for the purposes of s 16(1) of the Act.
[57] See, eg, World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114, [60] (Jessup J).
Accordingly, I must now determine whether each of the Registrations is ‘distinctive’ over the Citations. This involves consideration of the factors listed in s 19 of the Act.
Standard of the informed user[58]
[58] See Act s 19(4) as it stood prior to the amendment brought about by the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) sch 7 pt 1. The ‘standard of the informed user’ applies to designs registered pursuant to applications made before 11 September 2021.
Pursuant to s 19(4) of the Act, the factors prescribed in s 19 must be assessed from the perspective of the informed user. The requisite standard of the informed user is that of familiarity.[59] Thus, the informed user is a notional person who is familiar with the products to which the Registrations relate or similar products.[60] It is not necessary for an informed user to be an actual user of the products, however, familiarity can be acquired through use.[61] Notably, the requisite standard of familiarity does not automatically exclude a design expert.[62]
[59] GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, [15] (Burley J); Multisteps (n 49) [67].
[60] Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796, [39] (Nicholas J).
[61] Multisteps (n 49) [66].
[62] Ibid [67].
The Requestor submits that the informed user in this matter is ‘likely to be one of: a farmer, a fencing contractor, a fencing salesperson, a steel post producer’.[63] The Requestor accepts that William Julius is an informed user but asserts that the Julius Declaration should be given little weight due to certain views expressed regarding the repute and size of some of the known post manufacturers.[64] With respect to the Pickard Declaration, the Requestor contends that Dr Pickard is, at best, ‘an aficionado of agricultural history’ but is not an informed user of steel posts.[65]
[63] Requestor’s Submissions, [9].
[64] Ibid [13].
[65] Requestor’s Submissions, [18].
The Owner submits that the informed user ‘would be someone with [a] high level of familiarity with features and functions of steel posts’[66] and on this basis asserts that Mr Wulff, a patent attorney, is clearly not an informed user of the product. The Owner accepts that Mr Lourie ‘has relevant experience in relation to fence posts’ but highlights some aspects of the Lourie Declaration which it believes requires scrutiny.[67]
[66] Owner’s Submissions, [25].
[67] Ibid [46].
The Requestor’s characterisation of the informed user is reasonable. It encompasses persons who would be familiar with the functional and aesthetic features of posts and recognises that the informed user is not strictly confined to a single class of persons.[68] I accept that the professional and personal experiences of both Mr Julius and Mr Lourie would qualify them with the requisite degree of familiarity to be considered informed users. It is apparent that both individuals are knowledgeable as to the availability and types of posts in the market as well as the features and end uses of such products. That said, I acknowledge that Mr Julius and Mr Lourie make some problematic statements as highlighted in the submissions filed by each party. Nevertheless, these statements do not taint all of the information disclosed and guidance may still be drawn from some statements provided in the Julius Declaration and the Lourie Declaration.
[68] Multisteps (n 49) [70].
With respect to the Pickard Report, many of the conclusions drawn by Dr Pickard appear to be based on a comparison of the relevant Registration as against the prior art as a whole and not against each individual prior art design. This is evident in the summaries provided which compare the similarities and dissimilarities of the relevant Registration against the prior art base as a whole.[69] For this reason, I do not attach significant weight to any of the conclusions arrived at by Dr Pickard.
State of development of the prior art base
[69] See, eg, Pickard Report, 9, 13, 28, 32. Such an approach is equivalent to ‘mosaicing’ which is impermissible under the Act. See, eg, Keller v LED Technologies Pty Ltd [2010] FCAFC 55, [245] (Besanko J); Multisteps (n 49) [87].
The state of development of the prior art base is an important consideration when assessing the distinctiveness of a design. The maturity of the prior art base directly influences how the informed user will interpret differences between the design and the prior art. If the prior art base is highly developed, the informed user will generally attribute greater significance to smaller visual differences between the design and prior art for the purpose of distinctiveness. On the other hand, if the prior art base is underdeveloped, the informed user will generally require more significant visual differences between the design and prior art to avoid a finding of substantial similarity.
The Requestor submits that ‘the prior art base is small and less well-developed’ and ‘differences in extent and/or percentage of end-coating can be assumed to have no impact on the consideration of distinctiveness’.[70] This submission is problematic. First, this purportedly underdeveloped prior art base is difficult to reconcile with the fact that the Requestor simultaneously asserts that the shape and configuration of the steel posts in each of the Registrations were well known before the Priority Date. Second, the Requestor is construing the prior art base too narrowly by seemingly limiting it to pattern or ornamentation features of the posts and not the posts in general.
[70] Requestor’s Submissions, [69].
The Owner submits that the prior art base is ‘very well developed’.[71] I agree. It is uncontroversial to say that steel posts have been around for a lengthy period of time and the prior art before me indicates that a diverse range of posts as well as different types of apertures and keepers (and combinations thereof) exist. The informed user would therefore appreciate that the prior art base is highly developed and is likely to place greater significance on smaller differences between each of the Registrations and the relevant prior art.
Statement of newness and distinctiveness
[71] Owner’s Submissions, [86].
Pursuant to s 19(2)(b) of the Act, the informed user must have particular regard to the visual features identified in the SoND. In this instance, the SoND emphasises ‘the pattern or ornamentation as applied to a ground anchoring region of a steel post, as represented by grayscale shading in the accompanying representations’ in each of the Registrations. However, it is important to note that, for the reasons discussed at [35] to [39] of this decision, the presence of this SoND does not mean that other visual features can be completely disregarded. Rather, these other visual features should be given diminished attention.
Freedom to innovate
The designer’s freedom to innovate is largely entwined with the development of the prior art base. This is because the emergence of industry norms or particularly coveted features can directly curtail a designer’s potential scope for innovation. In the present matter, the prior art base for steel posts is highly developed. It is apparent from the maturity level of the prior art base that certain constraints have emerged with respect to the design of a steel post. It is evident that, for example, posts generally have to be a certain length, be thin and have flanges that run along the length of the post. Similarly, there are additional functional requirements of posts that further limit the freedom to innovate. These requirements include the incorporation of spaced apertures to allow wire to pass through and a pointed end which enables a post to be driven into the ground more easily. To a lesser extent, the deployment of some form of corrosion resistance on the part of the post which is exposed to soil is arguably a functional requirement itself, given both Mr Julius and Mr Lourie identified corrosive soils as a known problem.
The informed user would recognise these inherent functional constraints and understand that this will dictate the general appearance of a post. Therefore, the informed user would place less significance on any visual similarities arising from such constraints when considering the overall impressions conveyed by the respective designs.
Amount, quality and importance of the similarities in the context of the design as a whole
A cursory comparison of each of the Registrations with the Citations reveals some obvious similarities. Each design depicts a thin post that is partially coated with one end being pointed. However, these similarities arise from design features which are inherently present in posts. The informed user is therefore unlikely to conclude that any of the Registrations lack distinctiveness simply because they share visual similarities with the Citations in the general positioning of such features.
Rather, as the Owner submits, it is the location and extent of the coating relative to visual features such as the number of apertures, flanges or reinforcing plates of the post that the informed user’s attention will be drawn to.
Similarity in overall impression
To determine the distinctiveness of a design, a decision maker is required to carefully analyse the factors prescribed in s 19 of the Act from the perspective of the informed user. This analysis involves a studied comparison of the overall impressions conveyed by the respective designs[72] and the Act expressly provides that more weight is to be given to the similarities between the designs than to differences between them.[73] Bearing this in mind, I now turn to consider each of the Registrations against the prior art submitted by the Requestor.
874 Design
[72] Multisteps (n 49) [55].
[73] Act s 19(1).
The Requestor alleges that the 874 Design is ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; and each of the designs shown in Exhibit RL-4 through to Exhibit RL-8’.[74]
[74] Requestor’s Submissions, [98].
As regards to PA1, the 874 Design shares general similarities with this prior art insofar as the ground anchoring region of each post contrasts with its top part and each post has 6 apertures. However, the similarities end there. Significant differences exist in the variance of the spacing between apertures, the presence of latches and a reinforcing plate (part of which is depicted as shaded) in the 874 Design and the flanges being moderately curled. An informed user would be alert to these visual differences particularly as many serve a functional purpose.
In relation to PA6 and PA7,[75] the only similarity shared with the 874 Design is the fact that the ground anchoring region of each post contrasts with its top part. Otherwise, it is readily apparent that these designs are dissimilar in overall impression.
[75] For the reasons outlined at [44]–[45] of this decision, consideration is only required to be given to PA6 and PA7 which are contained in the ‘designs shown in Exhibit RL-4 through to Exhibit RL-8’.
Taking into account the highly developed prior art base, the constraints imposed on the designer and the inherent functional nature of the product, I am satisfied that the informed user would conclude that the 874 Design is substantially different in overall impression to the alleged prior art even when particular regard is had to the visual features identified in the SoND.
672 Design
The Requestor submits that the 672 Design is ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; and each of the designs shown in Exhibit RL-4 through to Exhibit RL-8’.[76]
[76] Requestor’s Submissions, [120].
With respect to PA1, the 672 Design shares broad similarities with this prior art insofar as the ground anchoring region of each post contrasts with its top part. However, stark differences emerge when consideration is given to the number of apertures, the presence of the notch at the post’s top and the extent of ground anchoring shading in the 672 Design. An informed user would not overlook such notable differences even when particular regard is given to the visual features identified in the SoND.
In relation to PA6 and PA7,[77] the 672 Design shares similarities with this prior art insofar as the ground anchoring region of each post contrasts with the body of the post and each share a similar number of apertures. However, there are significant differences in the proportion of shaded area of the grounded anchoring region as well as its application. In particular, numerous apertures fall within the shaded ground anchoring region of PA6 and PA7 whereas only 1 aperture appears in the shaded region in the 672 Design. Further, the application of the shading to the 672 Design is clearly delineated and this notably contrasts the haphazard almost blended shading which appears in PA6 and PA7.
[77] For the reasons outlined at [44]–[45] of this decision, consideration is only required to be given to PA6 and PA7 which are contained in the ‘designs shown in Exhibit RL-4 through to Exhibit RL-8’.
In view of the highly developed prior art base, the constraints imposed on the designer and the inherent functional nature of the product, I am satisfied that the informed user would conclude that the 672 Design is substantially different in overall impression to the alleged prior art even when particular regard is had to the visual features identified in the SoND.
673 Design
The Requestor submits that the 673 Design is ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; Exhibit RL-8’.[78]
[78] Requestor’s Submissions, [132].
With regard to PA1, the 673 Design shares broad similarities with this prior art insofar as the ground anchoring region of each post contrasts with its top part. However, stark differences emerge when consideration is given to the shape of the apertures, the presence of the notch at the post’s top and the extent of ground anchoring shading in the 673 Design. An informed user would not overlook such conspicuous differences even when particular regard is given to the visual features identified in the SoND.
In relation to PA6 and PA7,[79] the only similarity shared with the 673 Design is the fact that the ground anchoring region of each post contrasts with its top part. Otherwise, it is immediately apparent that these designs are dissimilar in overall impression.
[79] For the reasons outlined at [44]–[45] of this decision, consideration is only required to be given to PA6 and PA7 which are contained in the ‘designs shown in Exhibit RL-4 through to Exhibit RL-8’.
Considering the highly developed prior art base, the constraints imposed on the designer and the inherent functional nature of the product, I am satisfied that the informed user would conclude that the 673 Design is substantially different in overall impression to the alleged prior art even when particular regard is had to the visual features identified in the SoND.
674 Design
The Requestor submits that the 674 Design is ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; and each of the designs shown in Exhibit RL-4 through to Exhibit RL-8’.[80]
[80] Requestor’s Submissions, [104].
For similar reasons given in respect of the 874 and 672 Designs above, I am satisfied that the informed user would conclude that the 674 Design is substantially different in overall impression to alleged prior art even when particular regard is given to the visual features identified in the SoND.
677, 686 and 702 Designs
The Requestor submits that the 677, 686 and 702 Designs are ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; and each of the designs shown in Exhibit RL-4 through to Exhibit RL-8’.[81]
[81] Ibid[126]–[130].
For similar reasons given in respect of the 672 Design, I am satisfied that the informed user would conclude that the 677, 686 and 702 Designs are substantially different in overall impression to the alleged prior art even when particular regard is had to the visual features identified in the SoND.
689, 691 and 694 Designs
The Requestor submits that the 689, 691 and 694 Designs are ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; Exhibit
RL-8’.[82][82] Ibid [138], [140], [142].
For similar reasons given in respect of the 673 Design, I am satisfied that the informed user would conclude that the 689, 691 and 694 Designs are substantially different in overall impression to the alleged prior art even when particular regard is given to the visual features identified in the SoND.
693, 695, 696, 698, 699, 700 and 701 Designs
The Requestor alleges that the 693, 695, 696, 698, 699, 700 and 701 Designs are ‘substantially similar in overall impression to “equivalent” pattern or ornamentation features in each of: [PA1]; and each of the designs shown in Exhibit RL-4 through to Exhibit RL-8’.[83]
[83] Ibid [106]–[118].
For similar reasons given in respect of the 874 Design, I am satisfied that the informed user would conclude that the 693, 695, 696, 698, 699, 700 and 701 Designs are substantially different in overall impression to the alleged prior art even when particular regard is had to the visual features identified in the SoND.
678, 685, 688, 692 and 687 Designs
For completeness, I am satisfied that the informed user would conclude that the 678, 685, 688, 692 and 687 Designs are substantially different in overall impression to each of the Citations even when particular regard is had to the visual features identified in the SoND.
Decision
I am satisfied that no grounds for revocation exist. As such, examination of the Registrations has been completed and certificates of examination may now issue for Australian design numbers 201912874, 201914672, 201914673, 201914674, 201914677, 201914678, 201914685, 201914686, 201914687, 201914688, 201914689, 201914691, 201914692, 201914693, 201914694, 201914695, 201914696, 201914698, 201914699, 201914700, 201914701 and 201914702.
If the Registrar is served with a notice(s) of appeal within the relevant timeframe, the certificates of examination shall not issue until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the examination of these Registrations will be subject to that decision.
Costs
Both parties sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Requestor per s 127 of the Act in the amounts set out in Schedule 3 of the Design Regulations 2004 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Designs
5 August 2022Annexure A
Design number
Representation(s)
Classification
Priority date
201912874
25-01E
27 May 2019
201914672
25-01E
27 May 2019
201914673
25-01E
27 May 2019
201914674
25-01E
27 May 2019
201914677
25-01E
27 May 2019
201914678
25-01E
27 May 2019
201914685
25-01E
27 May 2019
201914686
25-01E
27 May 2019
201914687
25-01E
27 May 2019
201914688
25-01E
27 May 2019
201914689
25-01E
27 May 2019
201914691
25-01E
27 May 2019
201914692
25-01E
27 May 2019
201914693
25-02C
27 May 2019
201914694
25-01E
27 May 2019
201914695
25-01E
27 May 2019
201914696
25-01E
27 May 2019
201914698
25-01E
27 May 2019
201914699
25-01E
27 May 2019
201914700
25-01E
27 May 2019
201914701
25-01E
27 May 2019
201914702
25-01E
27 May 2019
Annexure B
Prior Art
Representation
Exhibit RL-4
Exhibit RL-6
Exhibit RL-7
Exhibit RL-8
Annexure C
1
6
8