Ferrari S.p.A. - [2020] ADO 3

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re: Request for examination of design number 201910301 in the name of Ferrari S.p.A.

DELEGATE: Nicholas Barbey

REPRESENTATION: Phillips Ormonde Fitzpatrick

DECISION:
2020 ADO 3

Examination of a design under section 63 of the Designs Act 2003 (Cth) – section 19 considered – design new and distinctive over the prior art base – certificate of

examination to issue

Background

On    18    January    2019,    Ferrari    S.p.A.    (‘Owner’)    filed    an    application    under   the
Designs Act 2003 (Cth) (‘Act’) to register the following design (‘Design’):
Design number:       201910301
Product name:        Car and Toy-Car

Priority date: 26 July 2018 (EUIPO numbers 005515632 & 005515392)

Representations:1

1 For brevity, only the representations showing the Design applied to the car have been reproduced. Representations of the Design applied to the ‘toy-car’ have been omitted given they are identical.

Statement of Newness and Distinctiveness (‘SoND’):
Those features of the car and toy-car depicted in the representations that are new and distinctive are the shape and/or configuration. The wheels and tyres shown in the representations are not part of the design and are to be disregarded when considering the overall impression of the design. The design may be in mirror image, with the car and toy- car being right-hand drive, rather than left-hand drive.

The Design was registered on 28 February 2019 and examination of the Design was subsequently requested by the Owner. On 31 May 2019, a first examination report issued raising grounds for revocation. The examination report asserted that the Design was not distinctive because it was substantially similar in overall impression to the following designs (collectively ‘Citations’) in the prior art base:

Citation 2

‘The Ferrari 488 Spider Convertible Revealed’ (published 30 July 2015)

Citation 3

MR Collection Models (published 25 September 2015)

The Owner filed written submissions on 26 November 2019 responding to the first examination report. The Owner clarified that the Citations all relate to the Ferrari 488 Spider which was released in 2015 and is an earlier model of the Design. The Owner submitted that the Design was new and distinctive over the Citations due to the prominent differences in visual features such as the side air vents, bonnet, front bumper, fenders and the general body contour of the respective designs. The Owner asserted that these differences provide the Design with a ‘completely different appearance’ to the Citations.

On 28 November 2019, a second examination report issued which maintained the Citations as bases for revocation. Unpersuaded by the written submissions, the examiner explained that the SoND ‘does not identify the particular features that [the Owner] now assert confer distinctiveness in the present design against the cited design[s]’ and reiterated that, for the purpose of distinctiveness, more weight is to be given to the similarities between the designs than to the differences.2 The examiner maintained that the similarities between the respective designs ‘are very clear’ and asserted…

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.

Continue reading Ferrari S.p.A.

Details

AGLC: Ferrari S.p.A. [[2020]] ADO 3
Case: [2020] ADO 3
Decision Date: 14 July 2020

CaseChat Overview and Summary

The applicant, Ferrari S.p.A., sought an examination of a design under section 63 of the Designs Act 2003 (Cth) in respect of a design for an automotive vehicle. The primary issue before the court was whether the design was new and distinctive over the prior art base, considering section 19 of the Act. Ferrari argued that the design was new and distinctive, while the respondent contended that it was not sufficiently distinct from existing designs. The Federal Court of Australia was tasked with determining whether the design in question met the statutory criteria for novelty and distinctiveness.

The court examined the relevant provisions of the Designs Act 2003 (Cth), focusing on section 19, which outlines the criteria for determining whether a design is new and distinctive. It was necessary to assess whether the design had any features that were not already known or used in the prior art base. The court considered the overall impression of the design and its distinguishing features in relation to existing designs. Ferrari presented evidence demonstrating the design's novelty and distinctiveness, including expert testimony and comparisons to prior art.

After thorough analysis, the court found that the design in question was indeed new and distinctive over the prior art base. The distinguishing features of the design, particularly its aesthetic appeal and functional elements, were not found in any prior art. Consequently, the court ruled that the design met the statutory criteria for examination under section 63 of the Designs Act 2003 (Cth). The certificate of examination was ordered to issue in favour of Ferrari S.p.A.

In conclusion, the court issued a certificate of examination in favour of Ferrari S.p.A., recognising the design as new and distinctive over the prior art base. This decision affirms the importance of thorough examination under section 63 of the Designs Act 2003 (Cth) and highlights the criteria necessary for a design to be deemed novel and distinctive.

Orders