Harrison v Theo
[1998] ADO 2
•21 July 1998
official notice
decision of a dePuty registrar of designs
Registered designs : Nos. 121707, 121727 and 121728 in the names of Craig Harrison and David O’Connor
Title: Mailbox
Action: Applications under Regulation 29 by Theo & Vicky Pty Ltd for a licence.
Decision: Issued .
Abstract
Where a registered design ceases, the restoration under section 27B of the Designs Act is not a full restoration of the rights of the registered owner. Rather it is a restoration of the registered design right other than those rights accrued by third parties who have made use of the registered design during its period of cessation, whether or not those rights are known to the registered owner or the Registrar at the time of restoration.
Registered designs 121707 and 121727 had been used by the applicant whilst they were ceased. A Licence to use registered designs 121707 and 121727 was granted to the applicant.
Designs act 1906
decision of a deputy registrar of designs
Re:Registered Designs Nos. 121707, 121727 and 121728 in the names of Craig Harrison and David O’Connor, applications under Regulation 29(2) by Theo & Vicky Pty Ltd for licence.
background
This matter concerns applications for the grant of licences to use registered designs 121707, 121727 and 121728. The current registered owners of the designs are Craig Harrison and David O’Connor. The initial period of registration for 121707 ceased on 5 October 1995. The initial period of registration for 121727 and 121728 ceased on 10 October 1995. The Australian Official Journal of Designs (AOJD), on 9 November 1995, advertised that the three designs had ceased. On 13 October 1995 the Designs Office received the scheduled first renewal fee for each of the three designs. On 18 October 1995 the Designs Office advised the registered owners that as the renewal fees were paid late they would have to apply for an extension of time under section 27B of the Designs Act. Between 18 October 1995 and 5 February 1996 the registered owners took no action to apply for an extension of time. Then, on 5 February 1996, Mr Craig Harrison lodged applications for extensions of time. The applications for extension of time were allowed on 11 April 1996 and that fact was advertised in the AOJD of 9 May 1996. The period of registration for each design was extended until 21 March 2000. On 18 November 1997 Theo & Vicky Pty Ltd lodged applications, under Regulation 29B, for licences to use the designs.
In determining this matter I must consider Regulations 29, 29A and 29B, providing:
29(1) This regulation applies if an extension of time has been granted under subsection 27B(2) of the Act and, as a result:
(a) an application for registration of a design that had lapsed is restored; or
(b) the registration of a design that had ceased to be in force is restored.
(2) If, before the extension of time referred to in subregulation (1) was granted, a person used, or otherwise took advantage of (whether by way of contract or otherwise), a design the subject of an application or registration to which subregulation (1) applies, he or she may apply to the Registrar for a licence to do any act that would, but for the operation of this regulation, infringe, or be taken to infringe, the monopoly in that design.
(3) An application under subregulation (2) must be in accordance with Form 9.
(4) A copy of the application made under subregulation (2) is to be given by the applicant to the person to whom the extension of time was granted and, at the direction of the Registrar, to any other person.
29A(1) A person to whom a copy of an application under subregulation 29(2) or 29AA(2) has been given may give notice of opposition to the application in accordance with Form 10A.
(2) Notice of opposition to an application is to be given not later than one month after the date on which a copy of the application was given to the person giving notice of opposition.
(3) A copy of the notice of opposition is to be given by the person giving notice to the person who made the application.
29B(1) If, after considering all the circumstances of the case, the Registrar is satisfied that, on the merits of the case, an application under subregulation 29(2) or 29AA(2) should be granted, the Registrar may grant to the applicant a licence under that subregulation:
(a) unconditionally; or
(b) subject to conditions.
(2) If, after considering all the circumstances of the case, the Registrar is not satisfied that, on the merits of the case, an application should not be granted, the Registrar may dismiss that application.
Regulation 29(4) requires a copy of each application for a licence to be given to the registered owners. Section 43 of the Designs Act allows a document to be given to a person by sending a prepaid letter through the post. Regulation 54(4) provides that service of a document may be effected by delivering or sending the document by prepaid letter through the post to the address for service. This regulation does not restrict service to occur at the address for service and no other address. The actual service of documents is governed by section 28A(1) of the Acts Interpretation Act 1901, which provides that a document may be served on a natural person by delivering it to the person personally or by sending it by prepaid post to the address of the place of residence of the person.
On 12 January 1998, the Designs Office received written advice from the agent for Theo & Vicky Pty Ltd that copies of the applications for licence were sent to the registered owners by registered mail, on 18 November 1997, to addresses which are the residential addresses of the registered owners as shown in the register of designs.
I am satisfied that the requirement, in regulation 29(4), of the applicant giving a copy of the application to the registered owners has been met.
Regulation 29A(1) allows the registered owners to lodge a notice of opposition to the application for licence. Regulation 29A(2) specifies the time in which a notice of opposition can be lodged. The time to lodge such a notice expired on 18 December 1997. No notice of opposition has been received by the Designs Office. That the registered owners did not lodge a notice of opposition I consider as an act of acquiescence on their part. This decision is based on the written material accompanying the applications for licences.
I am unaware of any precedent under the Designs Act relating to the granting of a compulsory licence by the Registrar of Designs. I am aware of a decision, under the Patents Act, relating to a compulsory licence, HRC Project Design Pty Ltd v Orford Pty Ltd 38 IPR 121, and I shall follow it. Under the Patents Act the issues to consider in whether to grant a licence, or not, are:
was there relevant exploitation of the invention?
should a licence be granted? and, if so
on what terms?
Under the Designs Regulations the issues to consider are:
was the design used or otherwise taken advantage of?
should a licence be granted? and, if so
on what terms?
WAS each of the designs used or otherwise taken advantage of?
Theo & Vicky Pty Ltd lodged a statutory declaration by Mr Chris Sylaidis and exhibits CS1 to CS4, and a statutory declaration by Ms Adrienné Gillian McAuley and exhibit CS1 in support of their applications. Paragraphs 4, 5, 7, and 8 of the declaration by Mr Sylaidis are relevant. They read:
“4. That in approximately mid November 1995, I visited the State Office of the Australian Industrial Property Organisation to check on designs of interest and their current status. Among many other designs, I was particularly interested in Registered Design Nos 121727, 121782 and 121707. Each of these design registrations relate to a design for a mail box.”
“5. That I enquired as to the status of the three abovementioned designs and was informed that the registrations had ceased as a result of a failure to pay a renewal fee which was due on each of the registrations on or before 10th October 1995.”
“7. That in view of the status of the three abovementioned registered designs, I took steps to copy each of the designs. This process included the purchase of letterboxes that were subject to the registered designs and to then make a mould which could be in turn used to cast components used to make each of the letterboxes.”
“8. Now produced and shown to me and marked as Exhibit CS2 is a photograph of the moulds that were produced. The manufacture of these moulds commenced in November 1996 and were completed in February 1996.”
Exhibit CS2 is a coloured reproduction of a coloured photograph of various moulds. The detail in the reproduction is somewhat unclear. I can see moulds that when used would produce some but not all the components of the three designs. I can see moulds that when used would reproduce all the components of designs 121707 and 121727. There is no mould shown that in use would produce the column portion that is on top of the base in the representations of 121728. The faces on this portion feature rectangles whereas in 121707 and 121727 the faces feature squares.
In paragraph 8 of his declaration Mr Sylaidis declares: “The manufacture of these moulds commenced in November 1996 and were completed in February 1996.” That statement is unclear. If the reference to November 1996 is correct, then that to February 1996 is incorrect, and vice versa. Reading the Sylaidis declaration and annexed exhibits as a whole, I consider that the reference to November 1996 in paragraph 8 must be read as November 1995. This would then have the sentence in paragraph 8 read: “The manufacture of these moulds commenced in November 1995 and were completed in February 1996.” Nowhere in the Sylaidis declaration is the exact commencement date for the manufacture of the moulds given. From paragraph 7 of the declaration it can be inferred that it was after the visit to the state office in approximately mid-November 1995. From the statutory declaration of Ms Adrienné Gillian McAuley I infer that the commencement date was on or after 10 November 1995. Therefore I am satisfied that the use of the designs to produce moulds occurred at a time when the registrations were ceased.
The plain meaning of the word “use” is “to employ for some purpose”. The act of making moulds of the letterboxes amounts to a use of the designs. The statement in paragraph 7 of the Sylaidis declaration, that moulds to cast each of the components of each of the three letterboxes were made notwithstanding, the moulds shown in exhibit CS2 do not fully support that statement. Accordingly, I am not satisfied that the applicant has used registered design 121728 when that design was ceased. However, I am satisfied that the applicant, Theo & Vicky Pty Ltd used registered designs 121707 and 121727 during the period between when the registrations were advertised ceased and when the registrations were advertised restored.
should a licence be granted?
I have found registered designs 121707 and 121727 were used during the period between when they were advertised ceased and when they were advertised restored.
Following HRC Project Design Pty Ltd v Orford Pty Ltd 38 IPR 121 as to the terms and conditions of a licence:
I grant to Theo & Vicky Pty Ltd, of 283 Torrens Road, West Croydon, South Australia a licence to do any act, that in the absence of the licence, would infringe, or be taken to infringe, the monopoly in the design, in registered Design number 121707, and in the design in registered Design number 121727. The licence is granted subject to the following terms:
The licence commences on 9 May 1996 and runs until the expiration of the terms of registered design numbers 121707 and 121727
The licence belongs to Theo & Vicky Pty Ltd
The licence may be transferred with Theo & Vicky Pty Ltd if that company changes hands by acquisition or merger
Theo & Vicky Pty Ltd can not otherwise assign or transfer the licence
Theo & Vicky Pty Ltd can not sublicence under the licence.
As required by section 33(1)(c) of the Designs Act and regulation 19 of the Designs Regulations I direct that the licence be entered in the Register.
Hugh Ness
Deputy Registrar of Designs
Patent attorneys for the registered owners:
Patent attorneys for the licensee: Madderns, Adelaide
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