Genie Electronics Pty Ltd v Rzek - [1999] ADO 1

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Registration : Nos. 130674 and 130675 in the name of Genie Electronics Pty Ltd

Title: Intercom unit

Action: Section 27A(4) Notification by Brian Rzek

Decision: Issued .
Abstract

Material filed subsequent to s.27A(4) notice taken into account.

No evidence provided which established that the registered designs were not new or original.

The issue of whether or not the registered designs were actually designs was not a matter to be considered in relation to s.27A(4). Similarly prior use was not a ground which can be argued by the s.27A(4).

Nevertheless, in considering these matters under s.27A(9), the registered designs were found to be designs within the meaning of s.4(1) and there was no evidence of prior use.

The terms of both registered designs were extended.

DESIGNS ACT 1906

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Re:Registered Design Nos. 130674 and 130675 by Genie Electronics Pty Ltd and Section 27A(4) Notice by Brian Rzek

BACKGROUND

On 19 May 1997, Genie Electronics Pty Ltd (hereinafter referred to as Genie) applied to register two designs for components of an intercom system. The applications were registered as 130674 and 130675 on 21 July 1997. The initial registration period therefore ended on 21 July 1998.

On 9 June 1998, Mr Brian Rzek lodged notices under s.27A(4) of the Designs Act 1906 alleging lack of newness and/or originality of the registered designs. The notices were accompanied by a statutory declaration and some material not exhibited to the declaration.

A patent attorney who was then representing the registered owner lodged a response to the s.27A(4) material on 21 July 1998.

On 25 August 1998, the Deputy Registrar of Designs informed both parties of his opinion that the period of registration of the two designs should be extended as the s.27A(4) notices and supporting documents did not meet the requirements of s.27A(4).

On 18 September 1998, Mr Rzek requested a hearing in relation to the s.27A(4) notices.

On 21 September 1998, Mr Rzek lodged further material in support of the s.27A(4) notices. This material was not provided to Genie until after the s.27A(4) hearing.

The s.27A(4) notices and extension of registration were considered at a hearing in Melbourne on 18 December 1998. Mr Rzek, who appeared at the hearing, was represented by Mr Theo Zervas of the firm Stonnington & Zervas, Barristers & Solicitors, of Melbourne. Genie did not attend the hearing.

THE REGISTERED DESIGNS

The article to which the designs are applicable is an 'intercom unit'. The representations for design 130674 illustrate a backing plate of similar proportions to a 2-gang power socket, surrounding a smaller inner panel which sits slightly raised from the surface of the backing plate. The rectangular inner panel consists of 4 straight walls joined by rounded, rather than square, corners.

A prominent feature of the inner panel is the eleven parallel lines running from the upper left to lower right at 45^oto the vertical. Given…

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.

Keep reading for free

Create a free CaseChat account to read Genie Electronics Pty Ltd v Rzek and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1999] ADO 1
Decision Date: 12 February 1999

CaseChat Overview and Summary

Genie Electronics Pty Ltd applied to register two designs for an intercom system, which were registered as design numbers 130674 and 130675. The initial registration period ended on 21 July 1998. On 9 June 1998, Brian Rzek lodged notices under s.27A(4) of the Designs Act 1906 alleging lack of newness and/or originality of the registered designs. The s.27A(4) notices and extension of registration were considered at a hearing in Melbourne on 18 December 1998. Rzek was represented by Mr Theo Zervas of the firm Stonnington & Zervas, Barristers & Solicitors, of Melbourne. Genie did not attend the hearing. The court first considered whether all of the material lodged by the notifier should be considered. The court found that all evidence would be considered as it was in the interest of both parties and the public interest that the matter be resolved as quickly as possible. The court next considered whether the notifier's material was relevant. The court found that the evidence was of low probative value and that it did not establish the publication dates required by the Act. The court then considered whether 130674 and 130675 were truly designs. The court found that the designs satisfied the statutory definition of 'design' and were directed towards a particular individual appearance of an intercom unit. The court next considered whether the designs were new or original. The court found that the registered designs were different to the design shown in the Herald Sun New Home Magazine of 22-28 June 1996, and that the notifier had not sufficiently discharged its onus of establishing a date of publication for the Metricon brochure. The court also found that the evidence was insufficient to establish that the registered designs had been applied to articles before the priority date as alleged or that those articles had been used to disclose the designs to the public. In conclusion, the court found that the registered designs 130674 and 130675 were 'designs' within the meaning of s.4(1). The court also found that Mr Rzek had not been successful under s.27A(4) in establishing that registered designs 130674 and 130675 were not novel or original. Consequently, the period of registration for registered design 130674 and the period of registration for registered design 130675 were extended. No costs were awarded.

Orders