Genie Electronics Pty Ltd v Rzek
[1999] ADO 1
•12 February 1999
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 45o to the vertical. Given the nature of the device, I assume that these lines, or slots, form the speaker grille. The impression given by these slots is that the speaker grille is of a generally 'square' shape. With the exception of two peripheral slots, the slots are not continuous, but are broken by a surface oriented at 90o to the direction of the slots and carrying some text. To the right of the speaker grille, and located equidistantly from the top and bottom edges of the inner panel is a circular push button which extends out beyond the surface of the inner panel. At the centre of the button there appears to be a light.
Registered Design 130674
The representation for design 130675 is shown below. The shape of the backing plate and inner panel appear to be identical to that of 130674. A speaker grille is formed on the inner panel, and again consists of eleven parallel slots running from the top left to lower right. A surface carrying some text runs perpendicularly to the slots. To the right of the grille are two lights, aligned vertically, and coincident with the top and bottom edges of the grille. Five circular push buttons are arrayed in a vertical line to the right of the lights. These buttons extend only slightly above the surface of the inner panel.
Registered Design 130675
The statement of monopoly for both designs is:
"Monopoly is claimed in the features of shape and configuration of the intercom system as illustrated in the representations but excludes the wording 'Music and Sound'."
EVIDENCE
The section 27A(4) notice asserts that the design is not new or original in light of documents published in Australia before the priority date. The evidence lodged by the notifier comprises:
a statutory declaration by Mr Phillip Haigh, dated 1 June 1998 and accompanied by a copy of invoice number 2318 from Crimewatch (AUST) to Crimewatch Queensland;
faxed orders to Crimevision from Premier Clean Pty Ltd (dated 16 April 1997) and Gate-A-Mation (dated 30 April 1997);
a faxed order to Crimewatch from Solarvac dated 1 May 1997;
a copy of an invoice from Crimewatch to Allied Services with a date of 2 August 1996;
a fax from Laser Imaging Pty Ltd to Crimewatch, which provides a quote for the processing of panels, dated 13 August 1996;
a single-sided gloss A4 brochure with the word 'CRIMEVISION' at the top,
a double-sided gloss A4 brochure with the phrase 'The New Hi Tech Front Door Communicators' at the top; and
a written quote from H&S Photography and Design to Crimewatch for an 'A4 2 sided flyer on 130 gsm gloss art'.
Further material was lodged by Crimevision on 21 September 1998, which included:
a copy of an invoice from Rhojon Electronics to Crimewatch for supply of several items referred to as CW1 and CW3;
10. an invoice from Landmark Printing Pty Ltd for '10000 Installation Man.cw1/cw3' to which is appended 2 copies of the single-sided gloss A4 brochure as lodged with the S27A(4) notice; and
11. a receipt from H&S Photography and Design to Crimewatch in the amount of $1237 to which is attached a copy of the double-sided gloss A4 brochure as lodged with the S27A(4) notice.
At the hearing Mr Zervas produced further information in the form of:
12. a 'Metricon Homes' brochure; and
13. a print from microfiche of the front cover of the Herald Sun New Home Magazine of 22-28 June 1996.
As Genie had not had been served a copy of the evidence lodged in September or at the hearing, I afforded them the opportunity to consider this material in a letter dated 23rd December 1998. In response, Mr John Drummond, a director of Genie, filed a written submission regarding this evidence on 25th January 1999.
I will discuss the submissions in more detail, where appropriate, later in my decision.
DECISION
Filing of the notifier's material.
The first point to address is whether I need to consider all of the material lodged by the notifier.
Subsection 27A(4) enables a person to lodge a notice up to eleven months after the date of registration of a design. That notice may set out any matter that the person considers to be relevant to the question of newness or originality of the design. That matter must also have been published in a document in Australia before the priority date of the relevant design application.
Whilst items 1 to 8 of the notifier's evidence were lodged well before the eleven month deadline of 21st June 1998, it is also clear that items 9 to 13 were lodged outside the relevant time limit. This later evidence, and any submissions by the notifier thereon, would normally play no part in a s.27A(4) hearing. However, although the powers of the Registrar to refuse an extension where a s.27A(4) notice has been lodged are limited to refusal on the grounds of newness or originality, the registrar is not specifically limited to basing refusal only on material mentioned in the notice. By the provisions of s.27A(9), the registrar may take into account 'any matter....that has come to his notice'. In this respect, I note the words of the delegate of the Registrar of Designs in the unpublished Designs Office decision, issued on 20 September 1996, in relation to registered designs 123294 and 123404 in the name of James Hart:
"Therefore, I conclude that section 27A(4) restricts the informant to only providing material published in a document which they consider to be relevant to the question whether the design was not new or original. In deciding whether to extend the term of registration, the Registrar can consider prior use under section 27A(9)."
To some extent, whether I disallow items 9 to 13 of the evidence in this decision under s.27A(4) is rather moot, as the Registrar may then consider it under s.27A(9). I believe it is in the interest of both parties and the public interest that I resolve this matter as quickly as possible and I therefore intend to consider all issues in this decision, rather than establish a separate decision under s.27A(9). The registered owner did not object to this approach.
Relevance of the notifier's material.
In their written submissions, Genie strongly submitted that the evidence filed by the notifier was inadmissible in these proceedings or otherwise should be given little weight. In this matter the Registrar is acting as a tribunal. Concerning tribunals, it was said by Lord Denning M.R. in T.A. Miller Ltd.v The Minister for Housing and Local Government and Another (1968) 1 WLR 992 that a tribunal (of this kind) is master of its own procedure provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it would not be evidence in a court of law.
Similarly, Deane J., speaking in Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666 stated that:
"These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant."
Accordingly the Registrar is entitled to act on any material which is 'logically probative' of the issues under decision. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see eg. Dunlop Holdings Ltd's Application 1979 RPC 523).
Turning to the evidence, I note that with the exception of the Haigh Declaration, not one item is in declaratory form as required by Regulation 46. I also find that, because of deficiencies in the evidence, a number of documents provided by the notifier have uncertain publication dates. In particular, it is not clear if any of items 1 to 12 were published in the sense required by the Designs Act. The 'Notice of Matter Material to Newness or Originality of Design' (ie. Form 8) states that the notifier should provide 'a declaration establishing when and where those documents were published in Australia, together with an authenticated copy of that declaration;'. Mr Rzek has failed to comply with this requirement.
I note also that the material being relied on by the notifier is allegedly published not very much earlier than the priority dates of the registered designs. Where publication dates are close to the priority dates of registered designs, it is imperative, if a notifier is to establish a case of lack of newness or originality, that independent evidence is provided to clearly establish those publication dates. There is nothing of this nature before me.
Consequently, I am of the opinion that this evidence is of low probative value. I will nevertheless discuss all the evidence supplied by Mr Rzek rather than exclude parts at this stage.
Are 130674 and 130675 truly designs?
The notifier challenged the registration of the designs on the basis that they do 'not constitute a design within the meaning of s4(1) of the Designs Act 1906;'. Several lines of argument were proffered by Mr Zervas, and he briefly referred to Firmagroup Australia Pty. Ltd. v Byrne and Davidson Doors (VIC.) Pty. Ltd. and Others (1994) 180 CLR 483 F.C. 87/038, re Wolanski's registered design and L.J. Fisher & Co. Ltd. v Fabtile Industries Ltd. (1979) 49 AOJP 3611 in his submissions.
I note that s.27A(4) allows a third party to lodge documents which the third party considers will destroy the newness or originality of a registered design. There is no provision for the third party to challenge whether the registered design is in fact a design. However, I will consider the matter under s.27A(9) to remove any uncertainty about the status of the registered designs.
As I understand it, the main thrust of the notifier's arguments was that the designs were no more than a method or principle of construction, consisted of features that could not be judged by the eye, and because they were not new or original, could not be considered as 'designs'. In his written submissions, Mr Zervas concluded that:
"....this is a situation where 'no design' exists 'within the scope of s17 of the Act'."
and
"In my submission the previously published and Commercial exploitation of the non-registered design of Rzek and the proposed design of Genie do not differ so much as to be judged by the eye."
I find neither of these submissions convincing. It is clear that a method or principle of construction for an article cannot be registered as a design. In Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (VIC.) Pty Ltd and Others (supra), the court stated at 487 that:
"Specificity of shape and configuration must be conveyed by a registrable design; features of a design which do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform, and which are consistent with a variety of particular shapes in articles copying those features, are not amenable to protection by the Act."
In assessing whether the designs are directed to a method or principle of construction, I think it sensible to consider the features for which the registered owner seeks protection by referring to the drawings provided and the statements of monopoly. Here the registered owner has claimed protection for the particular appearance represented by the drawings. I do not believe that the designs are so comprehensive in character that they embrace every conceivable configuration of backing plate, slots and buttons for an intercom unit. In my opinion the only features that the registered owner is seeking to protect are those features which convey one particular individual and specific appearance. I therefore conclude that the designs do not include a method or principle of construction.
The definition of design further requires that the features of shape, configuration, pattern or ornamentation which comprise the design be features that 'in the finished article, can be judged by the eye'. In L.J. Fisher & Co. Ltd. v Fabtile Industries Ltd. (supra), Fullager J. said:
"First, to say that a design means features which in the finished article can be judged by the eye means that the design must be distinct and must present an appearance that strikes the eye as being different from any previously existing shape, configuration, pattern or ornament. The design must be reasonably 'clear and succinct'; it 'must appear with reasonable clarity and without the necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the design has been applied'."
I am satisfied that the registered designs can be judged by the eye, as a simple comparison between them and the evidence shows that distinct differences between their appearances and those of the articles depicted in the evidence do exist. Whether or not these differences are sufficient to confer newness or originality does not detract from their standing as 'designs'.
The question of whether 'newness or originality' is a prerequisite under s.4(1) has been considered in Interlego AG and Lego Australia Pty Ltd v Croner Trading Pty Ltd (1992) 25 IPR 65. In his decision, Gummow J. stated that:
"That for which registration is sought will be 'capable of registration' under the designs statute if it is of an inherent character which answers the statutory definition. This will be so even if there is no legal right to compel registration because the design lacks the temporal quality of novelty required by s. 17 of the 1906 Act or s.49 of the 1907 Act."
In my opinion, both 130674 and 130675 are directed towards a particular individual appearance of an intercom unit. They each constitute a design capable of being registered under the Act as they possess those essential characteristics which qualify each of them as a 'design' within the meaning of s.4(1). They do not cease to have that intrinsic quality merely because a lack of novelty may render them unregistrable. Irrespective of whether or not they are new or original, I believe that they are truly 'designs'.
In summary, I do not accept the notifier's submissions that neither design falls within the definition of 'design' in s.4(1). I am satisfied that the designs satisfy the statutory definition of 'design' by reason of their applicability to the purpose of shape or configuration of an article, being features that, in the finished article, can be judged by the eye.
Are the designs new or original?
Even though I have concluded that designs 130674 and 136075 fall within the definition of 'design' in s.4(1), under s.17(1) it is still necessary that they be 'new or original'. Subsection 17(1)(a) of the Designs Act 1906 provides as follows:
"17.(1) Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design:
(a) differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article;"
In considering whether a registered design is new or original it is the appearance of the design as a whole as judged by the eye alone which is important. The eye should be that of an instructed person; that is, the eye of one who knows what was common trade knowledge and usage in the class of articles to which the design applies (Phillips v Harbro Rubber Co. (1920) 37 RPC 233). Ordinary trade variants, routinely used in the trade and introduced into an old design, do not make a new or original design.
A design which differs from an earlier design in small details requires careful consideration since immaterial details would deprive a design of newness or originality. This consideration needs to be made having regard to the nature of the article (Le May v Welch 35 AOJP 2512) and to the fundamental form and development of such articles in the trade (D Sebel & Co. Ltd. v National Art Metal Co. Pty. Ltd. (1965) 10 FLR 224).
The D Sebel (supra) case also states that the onus lies with the party asserting invalidity of the design registration to establish that that is the case.
Mr Zervas also referred me to the relevant law regarding novelty of designs and directed me to J Rapee & Co. Pty. Ltd. v Kas Cushions Pty. Ltd. and Komplement Studios Pty. Ltd. (1989) AIPC 90-626 in which Gummow J. accepted that prior publication may result from advertisement or illustrations in a catalogue.
Of the evidence that the notifier has provided, I find that items 6, 7, 8 and 10 to 13 come closest to an anticipation (to my mind, the other items lean more towards the issue of prior use, and are considered later in this decision). Items 6 to 8 have been previously considered by the Deputy Registrar of Designs, and I find his comments of 19th August 1998 particularly apposite:
"One leaflet was printed in March 1997 and the other some time after 7 July 1995. The date of printing a leaflet does not establish when the leaflet was made publicly available in Australia. Failure to establish these dates is fatal to any further consideration of the notices under section 27A(4)."
In their submissions at the hearing, the notifier stated that their brochures had been published, and referred to the receipts from H&S Photography and Design and Landmark Printing in support of their case. Whilst these receipts indicate that some brochures were ordered and printed, it is not entirely clear that these receipts were for the printing of the two glossy brochures tendered as evidence. Even if the receipts relate to the printing of these two glossy brochures, they provide no indication of when, if ever, these brochures were made publicly available. As I have no other evidence before me to corroborate the assertion that this material has been published, I must respectfully agree with the conclusion reached by the Deputy Registrar. The mere fact that these brochures have been printed does not automatically imply that they have been published in the sense required by the Act.
For reasons which I have already given with respect to items 6 to 8, I also reject the notion that items 10 and 11 of the evidence determine proof of publication.
Items 12 and 13 of the evidence are the 'Metricon Homes' brochure and a copy from microfiche of the front cover of the Herald Sun New Home Magazine of 22-28 June 1996. There is no indication on the brochure itself to identify when it was published. It is clear that the notifier seeks to rely on the publication of the New Home Magazine to establish a date of publication for the 'Metricon Homes' brochure. Whilst the microfiche copy of the New Home Magazine was not notarised in any way, I am willing to treat it as if the New Home Magazine of June 22-28 1996 was before me. About these exhibits Mr Zervas says:
"They (Metricon) have a brochure here of various homes, one of which shows a depiction of a home called 'The Carrington'....and just on the wall here from the dining room towards the rumpus room there is a unit on the wall, which is an internal five button station, which is badged 'Crimevision'. It was a little bit difficult to find when publication of this document came about, however, we've managed to look through the Herald Sun, and lo and behold, that exact picture called 'The Carrington' was put on the front page of the Herald Sun Home Magazine. This came out June 22-28 1996....and certainly, the publication of this document, from what we've established from Metricon, seemed to be printed in the early part of January - February of 1996, and by the time it was printed, published, home completed and then written up in the home magazine it was 2 months later."
and when comparing the photo on the cover of the Home Magazine to the photo in the 'Metricon Homes' brochure:
"....clearly identifiable that it is the same photo."
I find the New Home Magazine incapable of establishing a publication date for the 'Metricon Homes' brochure on at least two grounds. First, the front cover of the New Home Magazine merely establishes that a photo of 'The Carrington', not the whole Metricon brochure, was published by the 22nd June 1996. My conclusion might well be different if the magazine included a photo of the 'Metricon Homes' brochure, rather than of 'The Carrington'. Second, and most crucially, the photographs are not the same.
A careful comparison between the photo of 'The Carrington' from the New Home Magazine and the photo of 'The Carrington' from the Metricon brochure show that there are subtle, but distinct, differences. For example, I note that the photos were taken from different angles, as evidenced by the left column obscuring the artwork on the rumpus room wall to a different extent. It is obvious that the cushions on the tub chair in the rumpus room have been rearranged. In the Metricon brochure they are sitting flat, whilst in the New Home Magazine they are shown sitting on their corners. As well, all three window blinds are depicted lower in the Metricon brochure than they are in the magazine. Other differences can be readily ascertained.
Accordingly, as the notifier has not sufficiently discharged its onus of establishing a date of publication for the 'Metricon Homes' brochure, I must find that it does not provide any evidence of relevance to the issues in this matter.
In view of my findings on the relevance of portions of the evidence filed by the notifier, the only published material which I believe I am able to consider is the Herald Sun New Home Magazine of 22-28 June 1996. Although the copy from microfiche of the New Home Magazine that has been provided is of particularly poor quality, the major features of the design are adequately disclosed to the eye.
At the hearing, Mr Zervas submitted that '….at first blush….they appear to be pretty similar…' when contrasting the registered designs to the evidence provided. I beg to differ. Comparing the registered designs to the photo from the New Home Magazine without any attempt to make a detailed examination, I am immediately of the opinion that the designs are different and have a different aesthetic effect. A closer examination discloses several differences between the registered designs and the photo, such as:
the speaker grilles of the registered designs being square rather than circular;
the speaker grilles of the registered designs appearing more 'dense' due to an increase in the number of slots;
the direction of the slots of the registered designs are at approximately 90o to the direction of the slots in the photo; and
the grilles in the registered designs include a flat surface upon which text can be borne.
The critical matter is that the registered designs as a whole look distinctly different to the design shown in the photo. I do not believe that these differences amount to no more than 'immaterial' details or were 'features commonly used in the relevant trade'. In any case, the notifier has not provided any evidence in relation to 'immaterial' details or 'features commonly used in the relevant trade'. My conclusion is that there are differences between the registered designs and the photo, and that these differences are substantial. The New Home Magazine does not disclose the registered designs.
Furthermore, even if my assessment regarding the publication of the other items in evidence was incorrect, I am of the opinion that they do not deprive the registered designs of newness or originality. To my eye, none of them disclose the particular design shown in 130674 or 130675.
At the hearing, Mr Zervas raised the issue of a previous design application by Gary Heinz Koob, a former director of Crimewatch. The application, 3448/93, was lodged on the 1st November 1993, but did not proceed to registration. In his letter of 25th May 1998, Mr Rzek asserted that 3448/93 was 'an application for the registration on exactly the same systems as shown above' ie. registered designs 130674 and 130675. At the hearing, Mr Zervas submitted that:
"….the right to design registration is lost if there is prior publication. A similar result follows if there is a prior unsuccessful design application."
Reference was then made to the comments of Romer L.J. in Werner Motors Ltd v AW Gammage Ltd (1904) 21 RPC in support of this contention.
Putting aside for the moment the question of what is actually shown by 3448/93, I must first determine if it was ever published. Section 27(1) of the Designs Act 1906 specifically limits the publication of the application for registration of the design, the representations of the article to which the design is applied and any statement of monopoly or novelty until after the design is registered. Design application 3448/93 was never registered, and consequently, never published. I fail to see how it could be used to challenge the registered designs on want of novelty, and therefore need not consider what is shown by the representations in the application.
Whilst it is true that an unregistered application can be used as the basis of establishing lack of newness or originality, this can only occur prior to the application being registered or lapsed. This circumstance does not apply here.
As I have mentioned, Mr Zervas referred me to Werner Motors Ltd. v A.W. Gammage Ltd. (supra). I find this decision of little assistance to the notifier. This case dealt with the issue of dual protection, in which an applicant who had been granted a patent subsequently took out a design for the same article. It was held that a person is not precluded by the prior grant of patent rights from seeking designs protection in relation to an article. In my opinion, there is nothing in this decision that furthers the notifier's arguments.
Prior use
As I indicated at the hearing, the ground of "prior use" is not open for the s.27A(4) notifier to argue. S.27A(4) requires the notifier to establish lack of newness or originality by providing documents which disclose the earlier design relied on. However, I will consider the material provided by the notifier under s.27A(9) to see if prior use has been established.
As in patent law, 'prior use' means that the design has been applied to articles before the relevant priority date and that these articles have been used in such a manner as to disclose the design to the public without any corresponding burden of confidentiality. It is not necessary for the articles to have been sold, but merely used in such a way that the public can see them (see, for example, Bristol-Meyer Co. (Johnson's) Application [1975] RPC 127).
In their written submissions, the notifier stated that:
"Crimevision Pty. Ltd. Has (sic) been manufacturing these units and providing them for commercial exploitation since 1994. Leaflets and advertising have been provided to the market since 1995. The colour brochure was produced in March 1997, which was prior to the priority date. The units have also been displayed and distributed throughout Australia, in NSW, Queensland, Victoria and Western Australia. They have been shown at the HIA display in Melbourne since September 1996, and the Homeshow since 1996."
Mr Zervas also referred to the Haigh declaration and the various faxed orders and copies of invoices to establish that the CW-1 and CW-3 intercom systems had been available to the public without any obligation of confidence.
It is of concern that the only declaratory evidence in this matter comes from a person who presumably is in a close business relationship with the notifier and who is clearly not independent. This is particularly so given that it should have been fairly easy for Mr Rzek to obtain independent corroborating evidence, such as from the organisers of the Home Show or the HIA display.
Regarding the level of proof required to establish prior use, Graham J. in Seiller's Application [1970] RPC 103 at 106 stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proven."
With the possible exception of item 13, there is nothing in the evidence to establish the exact nature of the information, if any, that was communicated to the public. For example, the copy of invoice 2318 appended to the Haigh declaration specifies that several items, referred to as 'CW1', were sold from Crimewatch (AUST.) to Crimewatch (QLD.). Unfortunately, there is no evidence to show whether these items are the same as the CW-1 shown in the brochures. This also begs the question 'are CW1 and CW-1 the same'? Neither is it clear from the evidence what the designation CW1 is referring to. It would appear that the designation relates to a 'family' of products, rather than a single, specific article. I cannot resolve these issues from the material before me, and need not do so, as I consider that there is another, more compelling shortcoming in the notifier’s case on prior use.
I have already found that the 5-button internal intercom unit as shown in the New Home Magazine does not disclose the registered designs. For similar reasons, I also concluded that items 1 to 12 of the evidence do not disclose the registered designs. On the basis of the foregoing, I find that the evidence is insufficient to establish that the registered designs have been applied to articles before the priority date as alleged or that those articles have been used to disclose the designs to the public.
CONCLUSION
I have concluded that the registered designs 130674 and 130675 are 'designs' within the meaning of s.4(1). I also have found that Mr Rzek has not been successful under s.27A(4) in establishing that registered designs 130674 and 130675 are not novel or original. With regard to my consideration under s.27A(9), I have found that the registered designs have not been previously used in respect of any other article.
Consequently, I extend the period of registration for registered design 130674 and the period of registration for registered design 130675.
COSTS
At the hearing, the notifier made some submissions regarding costs. In most actions of this nature, it is normal for costs to follow the event. Mr Rzek has not been successful in the s.27A(4) action. However, as Genie did not appear at the hearing, there are no costs to be awarded in their favour. Accordingly I make no award of costs.
R Hallett
Delegate of the Registrar of Designs
Solicitors for the s.27A(4) notifier : Stonnington & Zervas, Melbourne
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