Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as Trustee for Locmac Trust

[2007] ADO 7

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS

Re:Designs 315785, 315786, 315787, 315788 and 315789, all in the name of Locmac Holdings Pty Ltd as trustee for Locmac Trust

and

Request under s.51 for revocation on grounds relating to entitled persons by Dennis Gravolin and Trailer Vision Pty Ltd

Delegate:

Dave Herald

Representation:

Registered Owner: Mr Ricky Chia, Patent Attorney of Intellepro, Brisbane

Applicant: Mr  Dennis Gravolin, on behalf of himself and Trailer Vision Pty Ltd.

Decision:

The applicant failed to establish any basis for being considered the author or owner of the designs.

Background

1.    The five designs were filed on 27 Feb 2006. On 29 June 2006 Mr Gravolin contacted the Designs Office and indicated that he intended challenging the ownership of the designs, and on 30 June 2006 filed a request for direction under s.29 or s.30. The request was in the name of ‘Dennis Gravolin/Trailer Vision Pty Ltd’. I understand that Dennis Gravolin is effectively the proprietor of Trailer Vision Pty Ltd - such that there is effectively but one requestor. Accordingly references to Mr Gravolin hereafter should be taken as including Trailer Vision Pty Ltd where appropriate, and vice versa.

2.    Mr Gravolin has been unrepresented in these proceedings. This presents a particular difficulty with arguing a case under s.29 or 30 – in that the design applications are not open for public inspection. While s.61 of the Act allows the Registrar to make the application documents available for inspection, the requirements of confidentiality mandate that such disclosure should not be made to a person in a position to obtain technical advantage from that disclosure. This would usually entail limiting disclosure to a legal representative – with the representative making a written undertaking about confidentiality. But this approach is not available for a self-represented person.

3.    The impasse was resolved by agreement that the designs proceed to registration (with the consequence of all documents on file becoming publicly available), with the proceedings under s.29/30 being converted to proceedings under s.51. This occurred by way of direction that came into effect on 2 July 2007.

4.    Following completion of evidence, a hearing was held in Brisbane on 23 October 2007. Mr Ricky Chia of Intellepro represented the design owner (with Mr McGillivray and Mr Adam Middleton of the owner being present). Mr Dennis Gravolin, supported by his wife, son (Mr Laeton Gravolin) and daughter-in-law (Ms Bridges), represented himself and Trailer Vision Pty Ltd.

5.    Ownership disputes are often quite complex and difficult. A difficulty for self-represented parties is the potential for them to not fully understand all the legal issues, and/or put their case forward in a concise and clear manner. In the circumstances I was concerned to ensure that I properly understood all possible bases of Mr Gravolin’s claims that the registered owner of the design was not entitled to the designs – which inevitably meant that the majority of the hearing involved discussion about Mr Gravolin’s evidence and arguments.

Identification of the owner – and Notice of trust

6.    A preliminary issue I raised at the hearing was the identification of the owner of the designs. The name of the owner for these designs is registered as:

Locmac Holdings Pty Ltd as trustee for Locmac Trust

However s.117 of the Act provides that

‘Notice of a trust, whether express, implied or constructive, must not be received by the Registrar or entered in the Register’.

While the words ‘as trustee for Locmac Trust’ do not appear to derogate from Locmac Holdings Pty Ltd being the owner of the various designs, prima facie the presence of the words is in direct contravention of s.117 of the Act. At the hearing Mr Chia indicated an intention to delete the words after ‘Ltd’, and Mr Gravolin indicated that he had no objection to this occurring. Subsequent to the hearing, requests to amend the name of the owner were filed, together with evidence that clearly establishes the existence of a clerical error by a filing clerk within Intellepro. As the amendment does not materially alter the meaning or scope of the Register entry, I have directed the amendment be made.

The relationship between the parties

7.    In the late 1990’s Mr Gravolin developed a warning system for alerting car drivers to defects in the electric cabling to a trailer. This is the subject of Australian Patent 719780 and corresponding US Patent 6535113. The system of the patent involves sensors on the cable connector (with the sensors involving magnetic reed switches), and a display panel to be mounted on the dashboard. The device was called the ‘TellTale’ system.

8.    The Design owners operate a company called KT Cable Accessories Pty Ltd (KT Cable). They assert that they became aware of the concept of LEDs on trailer connectors while on a visit to Taiwan in 2001 – referring to US patent 6259170 granted on 10 July 2001. They assert that they became aware of Trailer Vision’s activities some time in 2002, and subsequently built a relationship with Trailer Vision. This led to an agreement being executed whereby KT Cable would manufacture and distribute the TellTale system.

9.    For whatever reason, the TellTale system did not sell well, and the parties came into dispute. Proceedings were commenced in the Federal court by Mr Gravolin, which was settled on the basis of a deed executed on 21 Feb 2006 that terminated the agreement.

10.Six days later (on 27 Feb 2006) the present five designs were filed by Locmac – the entity behind KT Cables.

11.The primary basis for the claim by Mr Gravolin are the assertions that:

• in the course of the relationship between the parties, KT Cables became aware of confidential information, and
• that information was the basis of the designs applied for – either directly, or because KT Cables would not have come up with the designs without the benefit of that confidential material.

There was also debate about the roles of Laeton Gravolin and Adam Middleton in the development of certain items – and associated counter claims as to authorship.

Issues with the evidence

12.A couple of matters associated with the evidence require comment. I note that some of the issues with the evidence before me may have relevance to the conduct of other proceedings between the parties – see para 40 below.

13.Firstly, during the course of the hearing I was referred to minutes of certain meetings, allegedly signed by both parties. In his evidence Mr McGillivray alleged that his signature had been fraudulently applied. On my copy, I noted that there was a faint grey rectangular area surrounding both signatures. Mrs Gravolin handed me the ‘original’ that was in her material, and it was quickly apparent that the document filed with the Registrar and served on Locmac was not a copy of the original document. Rather it was a manufactured document – with the signatures from the original document having been electronically transferred by some means to the document provided in evidence.

14.On the face of it, this is a very serious matter. It is completely unacceptable for a party to submit manufactured documents in evidence. At the hearing I sought an explanation from the Gravolins – who had indicated that the evidence was put together by them alone. Despite my demands for an explanation, none was forthcoming. However several weeks after the hearing Ms Bridges filed a statutory declaration setting out an explanation for the document – based on it being scanned into a computer system using OCR-type software.

15.On comparing the original documents as handed up (and which Mr Gillivray confirmed he had signed) and the manufactured documents, I have failed to note any difference in the actual text; all differences are formatting-related issues. This is consistent with the explanation proffered. And the conduct of Mr and Mrs Gravolin at the hearing when handing up the original of the documents was in my view quite inconsistent with a person deliberately undertaking some form of material deceit on the Registrar by way of the manufactured documents. While Ms Bridges is open to serious criticism for not understanding the significance of a signature on a document in establishing authenticity, it seems to me that there has not been any intention to deliberately mislead the Registrar – and in particular, no intention to gain advantage in these proceedings from the  misrepresentation.

16.A second issue arose in the context of dates said to be associated with various computer files and emails in the evidence. Mr Laeton Gravolin asserted that file dates provided by the design owners had been fraudulently inserted in the documents. To support this he noted that computer file dates could be easily changed. Against this accusation, I requested Laeton explain the circumstances behind a document in his evidence – which was a forwarded email showing a send date that was some three weeks prior to it being received; he explained that this occurred because he had adjusted the system clock on his computer so that he could successfully run certain software for a university assignment.

17.This issue arose in the context of certain PDF computer files submitted by Locmac in evidence, showing a date of creation and a date of modification that were both prior to the release date of the pdf writer identified in the document. In response to further evidence submitted by Mr Gravolin subsequent to the hearing, I wrote to Locmac:

… in the circumstances it is appropriate to allow you an opportunity, if you so wish, to explain the basis on which the field ‘Modified’ on the relevant printouts in exhibit AM1 can pre-date the availability of the software referred to in either the ‘Application’ field (that is, PScript5.dll Version 5.2.2) or the ‘PDF Producer’ field. In this regard, I should observe that when I open a PDF file in Adobe Acrobat and save it with ‘Save As’, the Created field remains unchanged but the  ‘Modified’ field is set at today’s date.

18.In response, Locmac provided declarations by Mr Adam Middleton, and Mr Kevin Yuan. The declaration by Mr Middleton explains how he saved PDF files attached to emails. It does not explain how the ‘Modified’ field date was prior to the release of the software indicated in the ‘Application’ field of the ‘PDF Producer’ field. The declaration by Mr Yuan demonstrated how with suitable software the various fields could be changed – and exemplified a change of the ‘PDF Producer’ field to show a version that does not yet exist. He also confirms that the software he has used in recent times changes the Modified date to the date the file is modified in any way. That is, Yuan does not demonstrate how the ‘Modified’ field date can be prior to the release of the identified software via normal use of software. Rather his declaration supports the contention of Laeton Gravolin that the dates and other details can be easily changed with the ‘right’ software. In particular, the only explanation that has been provided to me for how the ‘Modified’ date in the relevant exhibits can be prior to the release date of the ‘Application’ or ‘PDF Producer’ is by way of deliberate adjustment (of one or more of the date, the Application, or the PDF producer) using relevant software.

19.In my view, there are serious unanswered questions about the dates in Exhibits AM1 filed in support of Locmac. And Laeton Gravolin has demonstrated his knowledge and capability to ‘adjust’ computer dates. Accordingly, I do not consider that I should rely upon the file date of any computer file submitted by either party without independent corroborative evidence.

20.At the hearing I had cause to enquire whether Mr Gravolin had his workbook with him such that I could inspect it – which he did. On inspection I was very surprised to see a number of diagrams that were far closer to the designs of the owners than the diagrams that Mr Gravolin had put in evidence. However, I have formed the view that I should place no reliance on the material in the work book.

The agreement between the parties

21.Entitlement to a design can depend upon an agreement between the parties – whether is was written, or arose by way of conduct. In particular, it can be important to establish whether there was an employee/employer arrangement, a contractual arrangement for the development of the product, or the existence of any fiducial obligations.

22.The parties executed an agreement on 21 May 2003. Issues of relevance to the present proceedings are:

·The agreement is expressly tied to the ‘TellTale’ device;

·The agreement makes no reference to rights associated with improvements or modifications of the ‘TellTale’ device;

·The agreement expressly states that “the parties are not partners or joint venturers nor is {the design owner} able to act as agent of {Gravolin} save as authorised by this agreement”.

·The agreement requires {the current design owners} “Not at any time during or after the term to divulge or allow to be divulged to any person any confidential information (relating to the products business or affairs of {Gravolin}) other than to persons who have signed a secrecy undertaking in the form approved by {Gravolin}”.

23.From this it is apparent that this written agreement does not establish an employer/employee relationship with associated fiducial obligations. Nor does the agreement deal with the ownership of any intellectual property rights created by KT Cable peripheral to their participation in the agreement. That is, conditional upon the confidentiality provisions being met, the agreement would seem to allow the current design owners to develop any incidental intellectual property rights with no obligation to disclose them to, or involve, Mr Gravolin. Consequently this agreement per se does not establish entitlement by Mr Gravolin to any of the current designs.

24.It is appropriate to note here that the evidence includes a copy of minutes of 23 May 2003 which records discussion about the agreement. It appears that Dennis Gravolin had received comments from a number of people (including a solicitor) expressing concern regarding the contents of the agreement. The minutes note that:

Lachlan ensured [sic] Dennis that this contract was in the best interests of both Trailer Vision and KT Cables.

And later:

As the contract had been amended several times prior to this meeting, the outcome was that the final contract between Trailer Vision and KT Cables was left as is without any changes. This was because, as Dennis explained that he trusted Lachlan and Jocelyn. Dennis felt that Trailer Vision was in safe hands and that KT Cables would not concede that trust and obligation, Lachlan and Adam both agreed on this issue.

From this it is quite clear that although Mr McGillivray was apparently urging Mr Gravolin to sign the agreement, Mr Gravolin knowingly signed it despite advice of it having shortcomings. But irrespective of this, nothing before me suggests that the agreement was deliberately worded in a way designed to allow KT Cables to profit (other than in accordance with the overt terms of the agreement) from access to confidential material.

Other relationship issues

25.Despite the express statement in the agreement that there was no partnership or joint venture arrangement, it is still possible that the conduct of the parties may have created a relationship that affected the ownership of the Designs – for example, some form of employer/employee arrangement outside of the agreement, or a collaborative arrangement. The evidence shows that there was an ongoing relationship between Laeton Gravolin and Adam Middleton with respect to a certain product. Laeton’s role (amongst others) was the creation of drawings using computer software.

26.The evidence of the Gravolins was directed to showing that while various people (including Adam Middleton) put forward suggestions, all the ‘design’ work was done by Laeton – and that therefore he alone was the author of the design of that product.

27.The evidence of the design owners was to the effect that Adam Middleton had provided Laeton Gravolin with the relevant suggestions for improvement of the product – which Laeton simply drew up on the computer. On this basis, the design owners argue that Adam was the author of the design of that product. However I find this proposition difficult to accept, as there is no apparent quid pro quo for Laeton’s time preparing the drawings on the computer. It would be necessary to infer that Laeton was performing the drafting for no remuneration or other benefit – which seems most unlikely in the circumstances.

28.The above conduct is clearly outside of the formal agreement between the parties. From the conduct as described, it would be reasonable to infer the existence of a collaborative arrangement between Laeton Gravolin and Adam Middleton (and hence between Trailer Vision and Locmac) with respect to that product. However I have compared the drawings of that product with the present designs, and can see no obvious correspondence. And at the hearing I enquired whether there were any intellectual property rights (patents or designs) associated expressly with the drawings of that product – to which I was advised that there were none. Accordingly, while the parties may have been in a collaborative arrangement with respect to that product, I do not need to decide this since none of the present designs relate to that product.

Confidentiality issues

29.The remaining basis for arguing entitlement is whether the designs filed by Locmac depend on confidential information that was obtained from Mr Gravolin. If the situation is one where, had Locmac not been aware of the confidential information they would not have conceived the designs, there may be a good case for Mr Gravolin having at least joint entitlement to the designs.

30.The evidence shows many drawings of couplings developed by the Gravolins. These include a large number of drawings that was communicated in confidence to Locmac in 2004. At the hearing I invited Mr Gravolin to show me the drawings that were closest to the products in each of the 5 designs. In this exercise, Mr Gravolin was not able to identify any situations of exact identity. There was a general similarity in that the drawings and designs all relate to trailer plugs, but also significant differences. However there was close similarity between certain drawings and Design 315788 – and significant similarity between certain other drawings and Design 315786 and 385787.

31.However, for entitlement to arise from the use of confidential information, that confidentiality must have existed at the time the designs were filed. On 11 March 2004, Dennis Gravolin filed a provisional patent application 2004901240. He filed the corresponding complete application 2005201078 on 11 March 2005 – and the specifications of both became publicly available on 29 September 2005, five months before the present Designs were filed. The relationship between the various designs, the drawings in the ‘confidential disclosure’ and the drawings in the complete patent specification, is as follows:

Design	Confidential drawings	Patent specification	Comments
315785	TV7PFS	Fig 8	The overall shape of the connector housing is quite different to that shown in both the confidential drawings and the patent specification. But the confidential drawings show two LEDs at the connector part of the socket rather than on the side (as in the patent drawing)
315786	TV7PLRS	Fig 5	The disclosure of the patent specification is substantially the same as the relevant confidential drawings.
315787	TV7PLRP	Fig 4	The disclosure of the patent specification is substantially the same as the relevant confidential drawings.
315788	TV7PR	Fig 1	The disclosure of the patent specification is substantially the same as the relevant confidential drawings.
315789	TV7PS	nil	Submitted in evidence are some images of an ‘original prototype’ that has some similarities.

32.The difficulty for Mr Gravolin is that any entitlement deriving from the use of confidential drawings ceased upon the publication of the corresponding drawings in these patent specifications. This applies directly to designs 315786, 315787 and 315788. The issue – if any – for those designs is not one of ownership or authorship; it is whether those designs are new and distinctive over the drawings of the patent specification. And this issue is not for consideration in the present proceedings.

33.Relevant images from design 315785 and fig 8 of the patent specification are given at appendix 1. There are clear differences in the shape and configuration of the housing. Most notably, fig 8 of the patent specification indicates the LEDs are on the side of the housing (121 to 126) whereas the design has the LEDs associated with the electrical sockets at the end of the housing (the row of small holes, under the row of large holes that receive the electrical terminals). However, the confidential drawings of TV7PS are the same as the figure 8 drawing, except that instead of having the 6 LEDs on the side of the housing, it has two LEDs adjacent the electrical sockets at the end of the housing. It might be argued that the TV7PS drawing disclosed the concept of locating LEDs on the end adjacent the electrical sockets. However the patent specification disclosed the general concept of LEDs associated with electrical connectors in trailer sockets – with diverse dispositions being disclosed. And with that knowledge it is reasonable to expect designers to locate the LEDs at any location they thought was appropriate. Consequently any remaining confidentiality in the ‘confidential drawings’ was limited to the particular disposition of the elements in those drawings. Apart from the general differences in the overall appearance of the socket, the disposition of the LEDs in the confidential drawings is not substantially replicated in this design. Therefore there is no basis to infer Mr Gravolin has entitlement in this design deriving from the use of his confidential information.

34.The closest document to design 315789 is not in the confidential drawings. Rather, in evidence Mr Gravolin exhibits an image of an ‘original prototype’ of a connector socket. It can be simply described as having a rectangular back plate with large-radius corners, a central rectangular hinged cover, and three LEDs located vertically on either side of the cover. Design 315789 has a hexagonal back plate with angular corners, and two rows of three LEDs located in a ‘V’ shaped formation under the socket area. Apart from the general and substantial differences in the overall appearance of the socket, the disposition of the LEDs in the ‘original prototype’ is not substantially replicated in this design. Therefore there is no basis to infer Mr Gravolin has entitlement in this design deriving from the use of his confidential information.

Decision

35.Where two parties are in a relationship that ceases, and very shortly thereafter one of the parties files Designs applications in respect of subject matter relevant to both parties, entitlement to those designs is naturally open to query.

36.In the present case, Mr Gravolin asserts that the designs filed by Locmac are based on confidential information derived from him during the period of their relationship. This argument fails, since the relevant confidential information became public information well before the designs were filed.

37.I have considered the evidence to assess whether Mr Gravolin has any other basis to claim entitlement in the designs. I have failed to find any basis for Mr Gravolin, or his son Laeton Gravolin, being considered either an author of the designs or entitled to the designs. Given the relationship between the Gravolins and Trailer Vision, this conclusion applies ipso facto to Trailer Vision as well.

38.Accordingly I refuse the requests under s.51.

39.I have commented above on the similarity of designs 315786, 315787 and 315788 to diagrams shown in patent specification 200520107. It is appropriate that I note here that this decision concerns entitlement to the designs, and not issues of (in particular) distinctiveness. This decision should not be taken as making any conclusions on the distinctiveness of these designs.

40.I note that both parties have filed patent applications in respect of devices very similar to the products of the designs in dispute. Noting that this decision has traversed the relationship between the parties, and that there is the possibility of collaboration with respect to certain limited activities, I am providing the Patent Office with a copy of this decision for possible inclusion on the files of patent application 2003221372, patent application 2005201078 and its divisional innovation patents 2006100780 and 2007100531, and patent application 2007200862. Indeed, I understand Locmac Pty Ltd has recently commenced proceedings against Mr Gravolin under s.32, and s.101M, of the Patents Act with respect to 2005201078, 2006100780 and 2007100531. However inclusion of this decision on those files is for information only, and should not be taken as an indication that any of these patents have, or have not, derived from collaborative efforts.

Costs

41.I see no reason to depart from the usual basis for the award of costs. I award costs against Mr Gravolin and Trailer Vision Pty Ltd (jointly and severally). For the avoidance of doubt, this matter proceeded on the basis of five requests, but reliant on a single set of evidence and a single hearing – and taxation should proceed on that basis.

D Herald

Deputy Registrar of Designs

18 Dec 2007

Appendix 1

Design 315785

Patent 2005201078