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DRiV IP, LLC

DRiV IP, LLC

Case [2024] ADO 3 3 October 2024

Intellectual Property Law

Design Law

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DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Registered design numbers 201914249 and 201914251 (class 14-02) – both being in respect of an Electronic device including a display screen; Display screen - in the name of DRiV IP, LLC

Delegate:

Benjamin Goldsworthy

Representation:

John Hogan of FB Rice Pty Ltd

Decision:

2024 ADO 3

Designs Act 2003 (Cth) – Examination of designs under section 63 –practice of viewing a product ‘at rest’ – interpretation of the meaning of ‘visual features of a product’ and ‘product’ – designs found to be not distinctive over the prior art base – proposed amendments not allowable or ineffective – registrations of each design to be revoked

Background

This proceeding concerns two designs (‘Designs’) which have been registered under the Designs Act 2003 (Cth) (‘Act’).[1] The Designs were entered on the Register of Designs with the following particulars:
[1] Unless I otherwise specify, throughout these written reasons a reference to a section of an enactment is a reference to a section in the Designs Act 2003 (Cth).
Design number: 201914251
Owner: DRiV IP, LLC (‘Owner’)
Product: Electronic device including a display screen; Display screen
Filed: 30 July 2019
Priority date: 31 January 2019 (‘Relevant Date’)[2]
[2] The Owner provides documents which I accept as evidence of the filing in the convention country of the United States of America of an application to register a design patent less than 6 months before filing an application to register the Designs in Australia. Accordingly, by s 27(1)(b) and reg 3.06(2) of the Designs Regulations 2004 (Cth) the priority date of the Designs is deemed to be the day when the basic application was made.
Convention details: Number: 29/678998; Country: United States of America; Filing Date: 31 January 2019
Statement of newness and distinctiveness: Newness and distinctiveness of the design reside in features of pattern and/or ornamentation of a logo on the product, those features being shown in solid unbroken lines in the accompanying representations, wherein the broken dash-dash lines of even length illustrate portions of the product or environmental subject matter that form no part of the design (‘SoND’)
Representations: see Schedule 1.
---
Design number: 201914249
Owner: Owner
Product: Electronic device including a display screen; Display screen
Filed: 30 July 2019
Priority date: Relevant Date
Convention details: Number: 29/678995; Country: United States of America; Filing Date: 31 January 2019
Statement of newness and distinctiveness: this is the same as the SoND
Representations: see Schedule 2.

Examination background

On 3 April 2023, the Owner sought examination of the Designs under s 63(1). During the examination, the Examiner raised the same citations against each of the Designs by written reports. I reproduce the citations at Schedule 3 to these written reasons (‘Citations’). When examining the Designs the Examiner considered the products pictured in the representations of the Designs to be ‘at rest’, an example depiction of which I set out…

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

AGLC: DRiV IP, LLC [2024] ADO 3
Case: [2024] ADO 3
Decision Date: 3 October 2024

CaseChat Overview and Summary

This decision concerns the examination and revocation of two registered designs filed by DRiV IP, LLC. The designs relate to an electronic device including a display screen. The Designs were registered under the Designs Act 2003 (Cth) (Act). The Owner sought examination of the Designs under s 63(1) of the Act and the Examiner raised citations against the Designs, finding that they were not new and distinctive. The Owner requested to be heard and filed submissions. The core issue for determination was how the Designs should be examined, namely whether they should be examined 'at rest', such that the circular image and/or DRIV text appearing in the representations of the Designs was effectively ignored. The Owner submitted that the Designs should not be examined 'at rest'. The Owner argued that the visual features of the Designs should be considered and that the Designs were distinctive when compared to the prior art base. The Owner submitted that the approach of examining designs 'at rest', as applied by the Registrar, was incorrect and based on a flawed interpretation of the Act. The Owner submitted that the word 'product' in the Act should be given a broader interpretation to include non-physical matter, such as an icon or a graphical user interface (GUI) per se.The delegate was satisfied that the Designs should be examined 'at rest' and found that when examined 'at rest', the Designs were substantially similar in overall impression to prior art and therefore not distinctive. The delegate found that the word 'product' in the Act did not refer to non-physical things, such as icons or GUIs, in the way asserted by the Owner. Accordingly, the Owner's argument did not assist it. The delegate also found that the proposed amendments to the product name of the Designs were not allowable or effective and refused all amendment requests present in the Owner's Submissions. The delegate was satisfied that the Designs were not new and distinctive and must be revoked. If the Registrar is not served with a notice of appeal within the appeals period, the Designs will be revoked. If the Registrar is served with a notice of appeal from this decision before the time of revocation, the delegate directs that revocation shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the examination should be in accordance with the Court’s order or direction.

Orders