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 the context of section 27A(4), enabling declaratory evidence of prior user would be likely to add substantially to the cost ......” and substantial delay.  Any delay would not be in the public interest.

·    Section 27A(9) provides that the Registrar is permitted to have regard to any matter that comes to his attention.  But construing this to be unlimited as to the nature of the matter is clearly going outside the intent of the legislation.  Such an interpretation would give an informant a “basis for action which is not compatible with the express limitations of 27A(4).”

·    The words “any matter” do not only appear in section 27A(9), but also in 27A(4) and that these have the same intent, ie to matter published in a document.

·    Determining whether a design is original or new is difficult enough in most instances where it is based on published documents.  It would be substantially more difficult to determine this on an alleged prior use and can only be appropriately determined by a court.

Mr Adam’s main points were:

·    Section 27A(9) is drafted in an inclusive fashion.  If prior use was to be excluded then it would have been specifically excluded from this section.

·    The question of it being inconvenient to consider prior use is not a consideration in this issue.

·    If the Registrar becomes aware of some relevant that may affect the validity of a design, then he should at least give consideration to this matter.

·    Having prior use excluded leads to the possibility of unscrupulous behaviour by either the registered owner or third parties.  This is particularly so when a person may see an unregistered design and then apply for a registration of the design themselves.

·    If a ground for interpreting section 27A(9) is consistency with Petty Patents practice, then the Registrar must consider prior use.

·    A number of recent decisions by the Design Office on section 27A have considered prior use.

commentaries:

Both parties referred to a couple of well known commentaries on industrial property. These were “Australian Industrial and Intellectual Property” published by CCH Australia Ltd and “Intellectual Property in Australia” published by Butterworths Ltd.  Mr Cross also referred to “The Law of Intellectual Property” by Ricketson.  Unfortunately none of these give any clear guidance to the question in hand other than to suggest that it may be possible for the Registrar to consider prior use.  I note that the CCH publication does not specifically address this point.  But it does state “that failure to take into account a relevant consideration would be ground for review of the decision under the Administrative Decisions (Judicial Review) Act 1977.”  The Butterwoths publication does go a bit further and refers to two Designs Office decisions in note 7 on page 1599.14 and suggests that based on these decisions that the registrar can consider prior use. Ricketson however is of the view that an informer cannot put forward evidence of prior use.  But he does make the comment that the Registrar is free to take this matter into account in deciding to refuse an extension.

Decision:

Sections 27A(4) and (9) read as follows:

“(4)A person may, at any time before the expiration of the period of 11 months commencing on the date on which the registration of a design was made in the register, lodge at the Design Office a notice, in accordance with a prescribed form, setting out any matter‑

(a)that has been published in a document in Australia before the priority date in respect of the application for registration of the design; and

(b)that the person considers to be relevant to the question whether the design was not, at the priority date referred to in paragraph (a), a design that was new or original.

(9)The Registrar may, having regard to any matter (including a matter published in a document a copy of which has been lodged with a notice under sub‑section (4)) that has come to his notice in connection with a design referred to in sub‑section (4), refuse an application under sub‑section (2) for extension of the period of registration of a design on the ground that the design was not, at the priority date in respect of the application for registration of the design, a design that was new or original.”

On a plain reading of section 27A(9), it would appear to read broader than 27A(4).  The section was obviously intended to cover material additional to that supplied under section 27A(4) that may come to the Registrar’s attention before deciding whether to extend the term of registration.  But the nature of this material is not specified.

In considering this issue, there is some merit in Mr Cross’s submissions regarding the intent of the law.  I think it is clear from the Franke Report that there was an intention that an intervention process by a third party should be fairly simple.  I take that to mean that not only should the process be simple but that the issues considered should be basic.  Section 27A(4) puts this intention into effect by restricting the material that an informant can provide to that contain in published documentation and shows that the design is not new or original (ie. other issues regarding registrablity are not considered).  As Mr Cross has argued that if this was the overall intent of the legislation, so section 27A(9) should be considered in a similar light. 

However, the commentaries referred to previously do seem to suggest, albeit not strongly, that it is possible for the Registrar to consider prior use.  The CCH publication does consider that the Registrar is bound to take into account all relevant considerations.  And so, as prior use is relevant to the question of whether a design is new or original, it can be considered.  In fact this issue has been consider in a number of recent decisions of the Designs Office.  I should note however that while these decisions are persuasive, I am not bound to follow them. 

Furthermore, while neither party specifically raised this, there is the issue of whether the Registrar should extend a registration of a design when there is evidence before him that clearly shows that the design is not new or original.  I refer to the judgement of the High Court in Tate v Haskins (1935) 53 CLR 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.  In the light of this I consider that the Registrar can and probably should consider prior use issue.

But such a view does lead to a problem.  To some extent it makes a nonsense of section 27A(4).  That is while an informant can only supply material published in a document under 27A(4), the above interpretation means that this section is “redundant” and the informant can file any material showing the design is not new or original.  I consider that this is not appropriate and is not the intention of the legislation.  Therefore, if the informant does put in material not in accord with section 27A(4), how should the Registrar deal with this?

In Patents a similar situation to the one being considered here arose in Re Applications by Yamazaki Mazak Corporation 24 IPR 321. The delegate of the Commissioner of Patents decided that to hear the informant only in relation to material put before him under section 28 of the Patents Act and not in relation to any other information put before him.  This other matter should be dealt with between the Commissioner and the patentee.  I consider a similar approach should apply to section 27A of the designs Act.

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).  But any material presented on prior use will be handle as a ex-parte matter between the Registrar and the owner of the design.

Leo J. O’Keeffe

Deputy Registrar of Designs

Patent attorneys for the owner: Phillips, Ormonde and Fitzpatrick, Melbourne

Patent attorneys for the informant: Fisher Adams Kelly, Brisbane