East West Design Inc

[1986] ADO 5

In the Matter of the Designs Act 1906

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In the Matter of an Application to Extend the Term of Registration of Registered Design No. 88427 in the Name of EAST WEST DESIGN INC.

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In the Matter of a Notice Lodged Pursuant to Section 27A(4) of the Act.

DECISION OF THE REGISTRAR OF DESIGNS:
         These matters arise from the lodgement on 23 January, 1985 of a Notice in accordance with section 27A(4) of the Act by Tupperware Australia Pty. Ltd., of Ferntree Gully, Victoria.  The Notice, in Form 8 as prescribed by the Regulations, sets out matter that has been in a document in Australia before the priority date in respect of registered design No. 88427 and is considered to be relevant to the question whether the design was not, at that date, new or original.  Copies of the documents concerned and declarations establishing when and where those documents were published in Australia were lodged with the Notice.
         A copy of the Notice and of the documentation was forwarded to the registered proprietor's agent, James M. Lawrie & Co., Patent Attorneys of Melbourne, Victoria, in accordance with section 27A(6) and regulation 25(1).  Receipt on 20 February, 1985 was notified by the agent, and the registered proprietor's response to this material therefore (by regulation 25(2)) fell due by 20 March, 1985, since the initial term of registration expired on 28 February, 1985.  An extension of the time in which to file a response was sought in terms of regulation 55(1) but could not be allowed, since that regulation is explicit in the provisions to which it applies and does not include regulation 25(2).

Following lodgement of the registered proprietor's response by the due date, all the material relating to the section 27A(4) matter was assessed and the registered proprietor informed that, as a result, the Registrar did not intend to extend the period of registration of the design.  Before issuing a final decision, however, a time and place for the matter to be heard was set down and notified as required by regulations 25(4) and 51(2).  It was confirmed, at the agent's request, that such hearing was to be strictly ex parte, without representation of the section 27A(4) informant.  This initial time and place for hearing was changed several times following requests from the agent, on the grounds that more time was required to prepare material and submissions for presentation at the hearing.  Finally, the agent was informed in January 1986 that the matter would be set down for the Canberra sessions 10‑14 February, 1986, and their non‑attendance would be taken to mean that they did not wish to be heard.  The 14 February was agreed as the final date, but on 13 February a facsimile transmission was received from the agent, advising that they had just received instructions from the registered proprietor not to appear at the hearing, as they did not wish to be heard.  I shall now provide the final decision in the matter.
         The design is registered in respect of the features of shape or configuration as applied to a connector plate for constructional elements.  An illustration of the design is attached to this decision at Attachment A.  The application was lodged in March 1983, but a Convention priority date of 13 September, 1982 was claimed, based on an application lodged in New Zealand on that date.  It is this date, then, which is of relevance in deciding whether or not the material lodged by Tupperware Australia Pty. Ltd. establishes that the design was not new or original.  This material consists, inter alia, of a copy of a magazine, Popular Science Monthly, published in New York in March 1982.  Mr. Michael S.K. Oliver of Upper Beaconsfield, Victoria, an employee (at that time) of Willi Kaufmann Diemakers Australia, a division of Tupperware Australia Pty. Ltd., has declared that he obtained this copy of the magazine, which he has purchased on a regular basis for several years, from a newsagent near his residence in early May 1982.  On page 141 of the magazine is an advertisement for what are termed STAR PLATES: these are described as steel plates designed to hold struts in such a way as to form a framework suitable for use as a small building such as a greenhouse, wood shed etc.  A copy of the advertisement is at Attachment B.  The advertisement includes illustrations of the steel plates and the framework, both in its basic form and in various applications.  The plate illustrated displays the same circular dish shape with 5 rectangular indentations radiating from a central pentagon, each rectangle and the pentagon having a circular hole, as depicted in the design shown at Attachment A.  Indeed, as I understand the correspondence and declaratory material provided by the registered proprietor, there is no dispute that the plate shown in this advertisement is identical in design to that registered; it is in fact an advertisement of the proprietor's product.  What is disputed is whether the informant's material constitutes prior publication in Australia of the registered design.
         The registered proprietor has provided various Statutory Declarations including one from one of its own directors, Mr. David Owen Hamel, wherein Mr. Hamel states that the advertisement in the Popular Science Monthly was placed by one of his company's customers, which had not been authorised to market Star Plates in Australia.
         Be that as it may, it is not, in my opinion, relevant to the question of whether or not the advertisement prior publishes the design in Australia.  There is no suggestion in any of the material before me that the advertisement is in breach of any confidential relationship between the registered proprietor and its business associates, or was placed without the knowledge and consent of the registered proprietor.  I am satisfied that the advertisement does in fact constitute prior publication of the design, in that it displays what is in effect the identical design and was available to the Australian public before the priority date in question, i.e. 13 September, 1982.  (See The Law of Intellectual Property by Staniforth Ricketson, 1984 at page 469).
         In addition to this material, the same advertisement was found in the June 1982 edition of Popular Mechanics magazine, published in New York and received in the Patent Office in July 1982.  This material was located by staff of the Designs section and, in accordance with the provisions of section 27A(9) of the Act, may be considered in relation to the registered proprietor's application under section 27A(2).  Again, I am satisfied that this disclosure of the design constitutes prior publication for the reasons recited above.
         Having come to this conclusion, I must also come to the conclusion that, as at 13 September, 1982, the design in suit was not new or original, and the application under section 27A(2) must be refused.  I therefore find it unnecessary to deal with the other matters relating to alleged use of the design in Australia raised in the material lodged by the section 27A(4) informant.  For the sake of completeness, however, I should perhaps place on record my doubts as to the adequacy of that material to establish this allegation.  I consider that matters relevant to the provisions of section 46A (use with or without the knowledge and consent of the proprietor) are left unresolved by the material currently before me.
         Nevertheless, as indicated above, I have found that material notified under section 27A(4) and identified under section 27A(9) has established that the design was, at the relevant date neither new nor original, and accordingly the application to extend the initial period of registration is refused.

(S. FARQUHAR)