Freighter Australia Manufacturing Pty Ltd - [1988] ADO 4

In the Matter of the Designs Act 1906 - and - In the Matter of Registered Design No. 92315 in the Name of FREIGHTER AUSTRALIA MANUFACTURING PTY. LTD. - and - In the Matter of Refusal under Section 27A(9) to Grant Extension of the Term of Registration.

DECISION OF THE REGISTRAR OF DESIGNS:

This design was registered on 5 June, 1986, with a priority (i.e. lodgement) date of 9 August, 1984, in respect of a Vehicle Body Curtain.

By application dated 2 June, 1987 Freighter Australia Manufacturing Pty. Ltd., of Victoria ("the registered proprietor"), sought extension of the period of registration to a date 6 years from the lodgement date.

On 5 May, 1987, in accordance with the provisions of section 27A(4) of the Act, Road Runner Trailers Limited, of Rotorua, New Zealand, notified the Registrar of matter which, it was claimed, shows that, as at the priority date, the design was not new or original. Despite a reply from the registered proprietor to this material, the Registrar notified the proprietor that he did not intend to extend the period of the registration, and the matter was set down to be heard in Melbourne on 30 September, 1987. The registered proprietor was represented by Mr. Laurie Dyson of Edwd. Waters & Sons, Patent & Trade Mark Attorneys of Melbourne.

According to the statement of monopoly put in by the registered proprietor, monopoly is claimed in the shape and configuration of the vehicle body curtain as illustrated in the representations annexed to the application documents.

The representations annexed to the application documents are as follows:

The material put in by Road Runner Trailers Limited consists of copies of a magazine, Transport Engineer, published in 1982 and 1983 and copies of various New Zealand patent specification abridgements. These were accompanied by Statutory Declarations by Michael Howard Hawkins, registered New Zealand patent attorney, and Athol Le Vaillant, Chairman of the Sydney Centre of the Institute of Road Transport Engineers. Both Messrs. Hawkins and Le Vaillant state that the Transport Engineer is a publication which would have been available in Australia at the relevant time. Mr. Hawkins also states that some of the van bodies illustrated in these magazines were on sale in Australia prior to August 1984. The patent specification abridgements were put in, according to Mr. Hawkins, as being illustrative of concertina-type closures for openings of various types. Although he states that various libraries throughout Australia receive the New Zealand Patent Office Journal, in which, presumably, these abridgements are published, there is nothing before me to show that these particular abridgements would have been available to the public in Australia in the sense required by section 17 of the Act, and I take no further note of them.

At the hearing, Mr. Dyson did not contest the claim that the copies of the Transport Engineer were, for the purpose of these proceedings, published and available in Australia at the relevant time.

As I understood Mr. Dyson's submissions on behalf of the registered…

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

Case: [1988] ADO 4
Decision Date: 31 March 1988

CaseChat Overview and Summary

The decision involves Freighter Australia Manufacturing Pty Ltd, which had a registered design for a vehicle body curtain. The dispute arose when Road Runner Trailers Limited contested the validity of the design and sought to prevent its extension. The case was heard in the court of the Registrar of Designs in Australia. The central legal issue was whether the design was new and original as claimed by the registered proprietor, Freighter Australia Manufacturing Pty Ltd, or if it had been anticipated by prior publications. The court examined this by comparing the registered design with published materials, specifically copies of the magazine Transport Engineer and patent specification abridgements, which were argued to be available in Australia prior to the priority date of the design.

The court found that the registered design, which claimed monopoly in the shape and configuration of the vehicle body curtain, was substantially similar to curtains illustrated in the May and June 1983 issues of Transport Engineer. These curtains, like the registered design, appeared flat and smooth when closed and assumed a concertina-type folded surface when opened. The court concluded that the registered design was not new or original as it was not materially different from the designs published in Transport Engineer. The court also highlighted that the ability to open the curtain from either end, while practical, did not contribute to the novelty of the design's shape and configuration, as functionality was not considered under the Designs Act. Based on this reasoning, the Registrar of Designs upheld the refusal to extend the term of the registration.

The final outcome of the case was that the application for extension of the term of the registration was refused. The court found that the registered design was not new or original, as it had been anticipated by prior publications. Consequently, the term of the registration could not be extended, and the decision of the Registrar was upheld.

Orders