Gareth Webber
[2012] ADO 2
•8 August 2012
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 328448 in the name of Party Hoppers International Ltd and examination thereof.
| Delegate: | Debrett Lyons |
| Representation: | Owner: Gareth Webber |
| Decision: | 2012 ADO 2 |
Background
This matter came before me because Party Hoppers International Ltd (‘the Owner’) had requested to be heard in relation to matters raised during examination of its design registration no. 328448 (‘the Registration’ and the design disclosed therein as ‘the Design’).
Following examination, the Design was found not to be new or distinctive because it was said to be substantially similar in overall impression to a design published in a document before the priority date of the Registration.
The Owner sought to amend the Registration however the examiner refused to do so in consequence of which the Owner asked to be heard. At the hearing, which took place in Canberra on 2 February 2012, the Owner was represented by Gareth Webber, managing director of the Owner, who attended the hearing by telephone from New Zealand.
Examination
An application was filed under the Designs Act 2003 (“the Act”) on 23 September 2009 (the ‘Priority Date’) to register the Design shown below in relation to a product described as “A Vehicle”.
The Design was duly registered and on 10 November 2009, the Owner requested examination of the Registration under section 63(1) of the Act. Under section 65(2)(a), examination requires the Registrar to consider whether the Registration should be revoked because it does not relate to a registrable design. Section 15(1) of the Act states that a design is a registrable design if it is new and distinctive when compared with the prior art base for the design as it existed before the Priority Date of the Design.
Section 16 of the Act provides that a design is new unless it is identical to a design that forms part of the prior art base for the Design and section 16(2) states that:
A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.
A first examination report dated 26 February 2010 alleged that the Design was not new and distinctive in view of a design disclosure made as early as 25 October 2007 at (the ‘Prior Disclosure’) An image of the Prior Disclosure is shown below.
On 17 August 2010 the then appointed attorneys for the Owner who had filed for Registration, James & Wells, Solicitors and Patent Attorneys, of New Zealand, responded to the examiner stating that the Prior Disclosure was “merely an artist’s impression showing a restricted view of our client’s earlier version of its current design.” They submitted, inter alia, that from this allegedly restricted view, “it is not possible to infer what the rest of the design could be” and “that our client’s new design includes a distinctive trailer underneath the carriage.” They continued, stating that “a key difference of the design of the present invention (sic.) over the Wayback website sketch is that the present design is applied to a trailer, whereas the Wayback website sketch shows a temporary building akin to a PORTACOM™. The Wayback website sketch does not therefore disclose a moveable trailer/carriage as shown in the present design.”
In a second report dated 23 September 2010 the examiner responded in several ways. Notably for the purpose of this decision he wrote (i) that the designs under comparison were both, in essence, artist’s impressions; (ii) that the objection of lack of newness was withdrawn but that of substantial similarity was maintained; (iii) that although the Prior Disclosure does not disclose a trailer, the Registration carries a Statement of Newness and Distinctiveness which “has attempted to disclaim the trailer which appears in broken lines.”
10. Very soon after it appears that the Owner assumed representation for all matters before the Office, nominating thereafter an Australian address for service in Queensland. On 26 October 2010, Mr Craig Douglas, another director of the Owner, emailed the Office requesting to be heard on the matter. In the email he foreshadowed correspondence by mail from his “business partner Gareth Webber … that I would like appended to this application.” On 29 October 2010, the Office received from the Owner a Request for Amendment of the Registration (the ‘Request’) signed by Gareth Webber.
11. For reasons which no longer bear on the outcome of this matter the examiner determined that the Request could not be processed since it sought to make an impermissible amendment to the Registration.
The Hearing
12. In the lead up to the hearing, I wrote to Mr Webber asking for outline submissions in response to which I was advised by Mr Webber that he was not a lawyer and that he had difficulty recalling the specifics of the case he had to put forward. He wrote that he recalled the rejection based on the Prior Disclosure but explained that “it appears, however, there was a clerical error (on my part) in the initial application which showed a significant part of the design as dotted lines (thus excluded from consideration) and with this clerical issue amended I hope you will view the entire design as significantly different to that which was previously disclosed.”
13. It followed that the hearing was atypical in the sense that Mr Webber was not in a position to give (and did not give) detailed legal submissions or arguments in aid of the Registration. He essentially reiterated what he had put in writing just prior to the hearing, underscored the commercial importance of intellectual property protection to the Owner’s business, and asked what further avenues there were that might be favourably explored. The hearing was short and little more than an opportunity for Mr Webber to hear from me as what I saw as the key issues. In particular, the two critical matters were whether the Registration was liable to revocation because it did not relate to a registrable design in view of the Prior Disclosure, and secondly, whether the Request pertained to a permissible amendment to the Registration.
14. It was clear that it was appropriate to address those two issues in reverse order since if the Registration could be amended, that amendment might have a fundamental influence on the determination of whether the Design is a registrable design.
15. The Hearing concluded with the undertaking that I would review the Request. If in my opinion furtherance of the Request hinged only on the substance of there being a clerical error or obvious mistake then the Owner would be given opportunity to provide further and better particulars in declaratory form or in a sworn statement.
The Opportunity to Amend
16. Following the Hearing I made a review of the Request and of the case history, after which I wrote to the Owner inviting a further request for amendment of the Registration before I made a determination on the question of distinctiveness. No reply was made to the letter, a copy of which is incorporated by reference into this decision as Appendix A.
Reasoning
17. Section 19 states that:
Factors to be considered in assessing substantial similarity in overall impression
(1)If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2)The person must also:
(a)have regard to the state of development of the prior art base for the design; and
(b)if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i)have particular regard to those features; and
(ii)if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c)if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d)have regard to the freedom of the creator of the design to innovate.
(3)If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4)In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
18. In his oral submissions, Mr Webber conceded that the Prior Disclosure was of a product promoted by the Owner and was illustrated substantially the same as the Design, but for a plinth in place of the trailer shown in the Design representations.
19. In the Design representations the trailer supporting the “can” shaped element is shown in broken lines. Ambiguity has always attached to the practice of using dotted or broken outline, or grey-scale, or in former times, blue wash to designate those parts of design representations which are intended to be treated somehow with diminished significance in the overall assessment of the design. I need not attempt to finally resolve how that practice should be interpreted under current legislation or to review the policy of this Office towards such practice for the following reason.
20. The SOND states that “[T]he portions of the vehicle shown in broken lines form no part of the design and are hereby disclaimed.” The Act does not provide for matter to be disclaimed. Inclusion of a statement of newness and distinctiveness is optional but if it is included in a registration then section 19(b)(ii) takes effect and, in this case, the statement that the trailer is to be “disclaimed” can be properly read in terms of section 19(b)(ii) as meaning that the remaining visual features of the Design are to be given particular regard.
21. No submissions were made which bore on how I might compare the Design with the Prior Disclosure, or as to who might be the informed user. But for the trailer I can not discern any noticeable differences between the corresponding designs. As such, I have formed the view that there is no cause for me to determine the informed user since the compared designs are substantially similar in overall impression when judged by any standard.
22. Section 17(1) does not apply and so I find that for the purposes of section 16, the Design is not distinctive over the Prior Disclosure and is therefore not a registrable design within the meaning of the Act.
Decision
23. Section 68 of the Act states that if the Registrar has examined the Design, and is satisfied that a ground for revocation of the Registration of the Design has been made out and the ground would not be removed if the Register were amended as proposed in a request under section 66, then provided that the Owner has been heard on the matter, the Registrar must give notice stating that the Registration is revoked and publish that fact along with a statement that the Design is taken never to have been registered.
24. Since an appeal lies to the Federal Court from this decision under section 68, it is my intention to publish notice of revocation of the Registration one month from the date of this decision. If, before the Registration is revoked, an appeal has been made to the Federal Court then unless that appeal is discontinued the final disposition of the Registration will lie with the decision of the Court.
Debrett Lyons
Hearing Officer
Design Hearings
25 October 2012
Appendix A
Gareth Webber
c/o Karen Fitzgerald
10 Gidya Road
MUDGEERABA
QLD 4213
Via post and email to [email protected]
Dear Sir,
Re: Australian Design Registration No. 328448 in the name of Party Hoppers International Ltd and examination thereof.
I write to you further to the hearing before me in Canberra on 2 February 2012 at which you made representations on behalf of Party Hoppers International Ltd (‘the Owner’).
At the hearing I indicated that I would write to you before making a final decision if there remained the possibility of amendment of the registration.
Background in brief
On 10 November 2009, the Owner requested examination of the registration. Examination requires the Registrar to consider whether the registration should be revoked because it does not relate to a “registrable design” which is defined by the Designs Act 2003 to mean a design which is new and distinctive when compared with the prior art base for that design as it existed before the priority date of that design.
Following examination, the design was found not to be registrable because it was considered substantially similar in overall impression to an image published as early as 25 October 2007 at (the ‘Prior Disclosure’).
After correspondence between the Owner’s then appointed attorneys and the examiner, the Owner sought a correction of the Register (the ‘Request’). The examiner considered that request not allowable and refused to correct the Register.
Ultimately the Owner asked to be heard.
The issues
There are three key issues:
whether the registration is a registrable design in view of the Prior Disclosure,
whether the Request is an allowable correction to the Register, and
whether, if the Request is allowable, that correction overcomes the ground for revocation
This letter is principally concerned with the second issue.
The Request
If the Register can be corrected in compliance with the legislation, that correction may have a fundamental influence on the determination of whether the design is a registrable design.
The ‘statement of newness and distinctiveness’ ( the “SOND”) reads:
Those features of the vehicle depicted in the representations that are new and distinctive are the shape and/or configuration. The portions of the vehicle shown in broken lines form no part of the design and are hereby disclaimed.
The Request was made by Mr Gareth Webber on behalf of the Owner and was received by this Office on 29 October 2010. The Owner nominated that the Request was for a correction to the Register on the basis of a clerical error or obvious mistake. The form requires “Details of Amendments Requested” in response to which the Owner provided the following statement:
The images of the design show dotted lines for trailer and is described as excluded from the design however this was an error as the trailer forms the significant difference form previously disclosed designs on our website.
The Request was accompanied by a Declaration made under regulation 11.26 of the Designs Regulations. The Declaration was made before a Justice of the Peace on 20 October 2010. The declarant is Gareth Webber. Mr Webber declared that:
The design of the can disclosed on did not operate as a trailer and the new design being registered is trailerized [sic] making it significantly different in appearance and functionality.
The Request was considered by an examiner and in a report dated 1 July 2011. While the Request is ambiguous, the examiner appears to have taken it to ask for a correction of the SOND. The examiner advised the Owner that amendment to the SOND was available only until the point of registration. The examiner wrote:
Your request to correct a clerical error or obvious mistake derives its authority from regulation 9.05. That regulation only allows an amendment to the Register. The SOND does not appear on the Register, meaning it cannot be corrected under that provision. Section 66(3) similarly only allows for amendments to be made to the Register.
…under section 28 it is theoretically possible to amend an application [and therefore the SOND], but it would be of no practical effect in this case. The SOND that should be considered by the examiner under section 19(2) is the one that existed when this was an application, and not any amended version after registration such as the proposed amendment.
The Request misquotes the registration number as 200913658 but since that was the corresponding application number I consider there to be substantial compliance and proper identification of the subject of the Request. The Declaration refers once again to application number 200912658.
In my assessment, the Request is not a request for correction made in compliance with the Regulations. Instead, it is a statement that the SOND and/or the representations were made in error. Moreover, the Declaration does not make a statement connected with the Request in a meaningful way. Instead it is a Declaration of fact about the nature of the Prior Disclosure.
In short, the Request does not contain a specific and actionable instruction as to the way in which the Register should be corrected. In addition, the Declaration fails to provide relevant support for the Request because it does not describe a relevant clerical error or obvious mistake.
Leaving aside the general consideration of whether a post-registration request for amendment or correction of a SOND is permissible under the Act, I cannot determine the nature of the Request and there is nothing in the Declaration to either clarify or support the Request.
In my assessment, the Request does not comply with the Regulations and it can not be easily and unambiguously understood so as to be dealt with by this Office.
Time to propose amendment to the registration
My interim decision is to allow the Owner a limited time to take advice on the options which might be available to it and make whatever applications to this Office it thinks are appropriate.
The Owner is reminded of what was said at the hearing regarding any request for correction based on a claim that there was a clerical error or an obvious mistake, specifically, that such a request would require supporting evidence in the form of a first hand declaratory statement from the person or persons responsible for the error or mistake.
In the past the Owner has sought the advice and guidance of this Office but since the matter has now proceeded beyond a hearing it is no longer appropriate for this Office to give additional guidance on issues upon which it is quite possible that it will later be required to make an administrative decision upon.
In the event that nothing more is heard from the Owner (or its representative) by a deadline of 8 October, 2012 this Office will move to take a final decision based on the record of events on file and in accordance with the original request for examination.
Yours faithfully
Debrett Lyons
Hearing Officer
Designs Hearings
8 August 2012
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