Hart v Oz-Post Pty Ltd - [1996] ADO 2

official notice

decision of a deputy registrar of designs

Registration : Nos. 123294 & 123404 in the name of Mr James Hart

Title: Post Support Assembly

Action: Section 27A(9), Consideration of prior use

Decision: Issued .
Abstract
: Informant filed material under Section 27A(4) and then latter filed material showing prior use of the design. Hearing in relation to section 27A(4) material postponed to enable the Registrar to decide whether he could consider prior use under section 27A(9).

Section 27A(9) allows the Registrar to consider prior use when deciding whether to extend the term of registration. Section 27A(4) restrictes the material an informant can provide to information published in a document. Consequentl, consideration of prior use is a matter to be dealt with between the Registrar and the registered owner.

designs act 1906

decision of a deputy registrar of designs

Re:Design Resigation Nos. 123294 and 123404 in the name of James Hart and Section 27A(4) Notice by Oz-Post Pty Ltd

background:

Mr James Hart (Hart) applied to register two designs for post support assemblies. The applications were 899/95 and 1089/95. Application 1089/95 was a Section 25D application, its parent being 899/95.

The applications proceeded to registration under registration numbers 123294 and 123404. The date of registration for 123294 was 1 May 1995 and was in force till 1 May 1996.

Oz-Post Pty Ltd (Oz) lodged notices and supporting documents under section 27A(4) on 21 March. The Deputy Registrar of Designs considered the material and on 29 May 1996 concluded that the design was new or original in the light of this material.

Oz requested to be heard on this matter and a hearing was set down for 19 August 1996. Just before the hearing took place, Oz submitted some new material to the Designs Office and to Hart. This material involved publication by prior use. As a result of discussions with both parties, the hearing was postponed and they agreed to make submissions on the question of whether the Registrar could consider prior use in these actions.

Submissions:

Both parties filed submissions on this issue; Mr Robert Cross, Patent Attorney, Phillips Ormonde and Fitzpatrick on behalf of Hart and Mr Grant Adams, Patent Attorney, Fisher Adams Kelly on behalf of Oz. I will summarise these submissions as follows.

Mr Cross’s main points were:

· The Designs Law Review Committee Report on the Law Relating to Designs, February 1973 (the Franki Report) from which the current legislation was formulated, recommended that there should be no formal opposition procedure. It recommended that there should be a provision similar to that in section 57 of the Patents Act 1952 and that the “Registrar shall not extend the period of registration .... if he is satisfied in relation to any document notified to him during the original period of registration, that the period should not be extended”.
· These recommendations were in part due to the concerns about possible delays and cost of formal opposition procedures. Mr Cross submitted that “In…

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.

Continue reading Hart v Oz-Post Pty Ltd

Details

AGLC: Hart v Oz-Post Pty Ltd [1996] ADO 2
Case: [1996] ADO 2
Decision Date: 20 September 1996

CaseChat Overview and Summary

In the case of Hart v Oz-Post Pty Ltd, Mr James Hart, the applicant and registrant of two designs for post support assemblies, was involved in a dispute with Oz-Post Pty Ltd (Oz), who challenged the validity of the design registrations. The dispute centered around the interpretation of sections 27A(4) and 27A(9) of the Designs Act 1906, which govern the process of extending the term of registration of a design and the consideration of prior use. Oz filed material under section 27A(4), which restricts the informant to providing information published in a document, and later submitted additional material showing prior use of the design, which was not covered by section 27A(4). The court was required to decide whether the Registrar could consider prior use under section 27A(9) and, if so, how such consideration should be handled.

The court examined the intent behind the legislation as outlined in the Franki Report, which recommended a simple intervention process by a third party. Section 27A(4) was intended to restrict the material an informant could provide to information published in a document, focusing on the basic issue of whether the design was new or original. However, section 27A(9) allowed the Registrar to consider any matter that came to his attention, including prior use, when deciding whether to extend the term of registration. The court considered whether the Registrar should consider prior use and, if so, how it should be handled. The court also referenced the High Court's decision in Tate v Haskins, which imposed a duty on the Commissioner of Patents not to seal a patent where he became aware of facts that would make the resulting patent invalid.

The court concluded that while section 27A(4) restricts the informant to providing material published in a document, the Registrar can consider prior use under section 27A(9) when deciding whether to extend the term of registration. However, any material presented on prior use should be handled as an ex-parte matter between the Registrar and the owner of the design, similar to the approach taken in the Patents Act. This approach ensures that the intent of the legislation is maintained while allowing the Registrar to consider relevant matters that may affect the validity of a design registration.

The court's decision provides clarity on the scope of section 27A(9) and the process for considering prior use in design registration disputes. By distinguishing between the roles of the informant and the Registrar, the court ensures that the intervention process remains simple and focused on the basic issue of whether the design is new or original. At the same time, the court allows the Registrar to consider relevant matters, such as prior use, that may affect the validity of a design registration. This decision provides guidance for both registrants and informants in future design registration disputes and helps ensure the proper administration of the Designs Act 1906.

Orders