Heithersay

[1986] ADO 6

In the matter of the Designs Act 1906

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In the matter of Registration No. 89370 in the Name of WILLIAM HEITHERSAY

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In the Matter of Extension of the Period of Registration.

DECISION OF DEPUTY REGISTRAR OF DESIGNS

Design No. 89370 was registered under the Designs Act 1906 on 16 August 1984 in the name of the applicant William Heithersay. Under the Act an individual registration provides the owner of the design, the subject of registration, with the exclusive right to apply the design to an article in respect of which it is registered. However, the right to apply for an individual registration requires that the design be limited to application to one article only, which article requires to be designated. Nevertheless, an application for registration and the consequential registration may extend beyond a single article provided the collective articles constitute a "set of articles" as defined in the Act such set being deemed to be one article for the purposes of the Act (sub‑sec. 20(7)). The article in respect of which the design in the present proceedings was registered was specified as a "Set of Toy Construction Pieces". The representations of the article to which the design is applied, which are also required under the Act, illustrate a number of articles of different shapes. Accordingly, the registration invokes the provisions of the Act whereby the articles illustrated are considered to constitute a set of articles as prescribed and thus are deemed to be one article for the purposes of the Act.

Registration under the Designs Act is effective for an initial period of 12 months following the date of registration. That period may be extended by the Registrar on application by the registered owner. However, the Registrar is empowered to consider any matter coming to his notice in determining whether to refuse an extension of the initial period of registration on the ground that the design was not new or original at the priority date of the application for registration (sub‑sec. 27A(9)). Sub‑sec. 27A(4) authorises a person to bring to the notice of the Designs Office matter that has been published in a document in Australia before the priority date of the application for registration and which that person considers relevant to the question whether the design was not new or original at the priority date. Under the terms of sub‑sec. 27A(4), such matter must be lodged at the Designs Office within the first 11 months of the initial period of registration.
         In the present case, an application to extend the initial period of registration was lodged 27 August 1984 shortly after registration.  Subsequently, notice of matter considered relevant to the newness or originality of the registered design was lodged on 15 July 1985 by Guiseppe Steven Calvo and Cheryl Calvo through their agent A. Tatlock & Associates, a firm of patent attorneys.  As required by sub‑sec 27A(6), the registered owner of the design was informed through his agent of the matter submitted by A. Tatlock & Associates.  The owner and his agent responded by submitting argument rebutting the relevance of that matter. In the event, the Registrar considered that the period of registration should not be extended and the agent for the registered owner was so advised.  In accordance with the entitlement provided by sec. 46, the owner exercised his right to be heard on the matter.  The hearing subsequently took place in the Designs Sub‑Office in Adelaide on Tuesday 15 July 1986, the applicant being represented by Mr H.K. Schulze, patent attorney of Collison & Co.
         The issue which I have to decide is whether the application to extend the initial period of registration of Registered Design No. 89370 should be refused under the provisions of sub.sec. 27A(9).  The sole basis for the decision is whether, having regard to any matter which has come to the notice of the Registrar in connection with the design, that design was not new or original at the priority date of the application for registration.  The priority date involved is the date of lodgment of the application for registration, namely, 8 July 1983.  The only matter which has come to the notice of  the Registrar in connection with the present design and which is relevant to the decision is the material lodged under sub. sec 27A(4) by A. Tatlock & Associates.  This material consists of disclosures of designs claimed to have been published before 8 July 1983 and in the light of which, in the opinion of the informants, the present registered design is not new or original. The first issue requiring to be addressed therefore is to identify  the design the subject of the present registration.
It follows from the statutory right provided by registration under the Designs Act, that the subject‑matter of registration is a design applied to a designated article. By definition in sec. 4, a design consists of features of shape, configuration, ornamentation or pattern applicable to an article which article may consist of one article, including a "set of articles".
         According to the definition in sec. 4., a set of articles means a number of articles that are‑

.of the same general character;

.ordinarily on sale, or intended to be used, together; and

.articles to each of which there is applied a design that is the same as, or that differs only in immaterial details or in features commonly used in the relevant trade from, the design applied to the other articles or to any of them.

It follows from that definition that, where a design is registered as applied to a "set of articles", the subject‑matter of the registration may be a single design or separate designs which differ only in immaterial details or features commonly used in the relevant trade.
         In order to identify the design which is the subject‑matter of a registration, an application for registration must be accompanied by representations which illustrate the article to which the design is applied.  The article illustrated is, of course, to be interpreted as corresponding to that designated.
         The specific features of shape, configuration, ornamentation and/or pattern applied to the illustrated article which are intended to be the subject‑matter of a registration may be specified in a statement of monopoly as provided for in the Act.  However, in the absence of a statement of monopoly the only claim to monopoly, identifiable with certainty from the representations is that deriving from the design consisting of the collective features of shape, configuration, oranamentation and pattern applied to the article illustrated which make up the totality of its appearance.  It is well esablished in such circumstances that that is the design constituting the subject‑matter of registration.
         The Act also provides for a statement of novelty which identifies the features of the article illustrated in the representations in respect of which novelty or originality is claimed.  Such statement therefore serves, not only to identify features which are significant in determining the newness or originality of the design which is, the subject of registration, but also those features which are considered essential to that design.
         In the present registration, neither a statement of monopoly nor a statement of novelty are provided.  If the registration involved a single article, it follows that the design, the subject of the registration, would consist of all the features of shape, configuration, ornamentation and pattern characterising the article illustrated in the representations with no special weight being given to any of those features in assessing newness or originality except as derives from their impact on the eye.
         However, the present registration involves a number of articles illustrated in the representations, each being characterised by different features of shape, configuration, ornamentation and pattern making up the totality of the individual appearance of each article.  The requirement for a single registration involving a number of articles is that the articles collectively constitute a "set of articles".  One requirement for such set is that each article of the set have the same design applied thereto or a design which differs only in immaterial details or features which are commonly used in the relevant trade, in this case, toy manufacture.  Accordingly, one approach in identifying the design (or designs) the subject of the present registration is to identify the collective features of shape, configuration, ornamentation and pattern common to the articles illustrated in the representations and to add, in determining the specific design applied to each article, those features if any, applied to the article which involve only differences in immaterial details or features commonly used in the toy manufacturing trade.   
However, is that the only approach consistent with the provisions of the Designs Act?
         It appears to me that an application may proceed to registration on the basis that a plurality of articles illustrated in the accompanying representations satisfies the requirements for  a "set of articles" notwithstanding that later analysis may show that irrespective of any considerations of the design applied to those illustrated articles the articles do not fall within the definition of a set of articles i.e. not being articles of the same general character or not being ordinarily on sale or intended to be used together.   It does not appear to me that the Act prescribes that a registration in such circumstances is consequentially invalid.  The question then arises whether, in such circumstances, the other criterion applicable to a set govern the identification of the design applied to the articles or whether ‑ in the absence of a statement of monopoly defining a specific design‑the result is simply that the registration provides a monopoly in respect of more than one design i.e. the separate designs represented by the totality of the features of shape, configuration, ornamentation and pattern applied to each article illustrated in the representations.
The same considerations arise in respect of a registration where there are no features of shape, configuration, ornamentation or pattern common to the articles purporting to constitute a set. There is then no question of identifying a common design no matter how elementary. Again, there is no provision in the Designs Act rendering such registration consequentially invalid. The simple result is that the registered owner of the designs has obtained, in one registration, a monopoly in respect of more than one design. The consequence of the Act providing for registration in respect of a "set of articles" thus appears to be merely a fiscal provision enabling a person to obtain multiple monopolies for the cost of one registration where the conditions prescribed for a "set of articles" are satisfied.
         It therefore appears that another approach is to ignore the requirements governing a set of articles where a registration involves more than one article and to identify the designs, the subject of the registration, as the separate designs applied to each article without regard as to whether the statutory requirements for a set of articles are satisfied.  This approach is supported by the fact that the prescription has been adopted from the U.K. designs legislation and that under that legislation the question as to whether the requirements in respect of a "set of articles" have been satisfied is a matter only for the Registrar.  It is therefore not a matter which has any significance following registration.  
         Each of the above approaches may result in a different conclusion on the issue of newness or originality of the design involved since the aggregate of features constituting a common design may be few and devoid of newness while the totality of features constituting the individual design applied to each article may be numerous and unequivocally new.  However, it follows that if the latter approach is adopted and one design is found to be not new or original, then the vestigial aggregate of the features of shape, configuration and/or pattern constituing the common design identifiable using the former approach must also be devoid of newness and originality.  In my view, for the reasons stated, I believe the latter approach to be the correct approach.
         In the present instance, the former approach would involve considerable difficulties in view of the substantial variations in the appearance of the various articles illustrated in the representations.  In fact, it appears that the articles illustrated have not been conceived as a set on the basis of any commonality of design but on the basis of a functional interaction between the articles.  Commonality of design is dependent upon identity of specific features of shape, configuration, ornamentation and/or pattern applied to the articles involved or the subsuming of the individual articles of differing shape, configuration, ornamentation and/or pattern into a single composite article e.g. as in the case of a jig‑saw puzzle or other multi‑component article.  The fact that articles interact functionally as a consequence of their various features of shape, configuration, ornamentation and/or pattern is irrelevant in determining whether those features constitute an essentially single design applied to a set of articles.
         Considering the material submitted under sub‑sec 27A(4), the relevant items consists of ‑

.Teachers Resource Book 1979‑80;

.Teachers Resource Book 1981

(both published by Modern Teaching Aids Pty Ltd of Brookvale NSW).

.Registered Design No 56950 registered on 27 May 1971.

The material lodged does not establish the specific dates of publication in Australia of the publications of Modern Teaching Aids Pty Ltd.  However, it is sufficiently adequate in my view to establish that these publications were available to the Australian public before the priority date of the present registration i.e. 8 July 1983.  Page 236 of the Teachers Resource Book 1979‑80 and page 217 of the Teachers Resource Book 1981 illustrate under the name DIDACTICO a toy consisting of a series of plastic circular discs identical in appearance (excluding colour which is not relevant) with that member of the present set marked A in the attachment to this decision.  Both publications illustrate a flat disc‑shaped toy having slots in the periphery at an angular spacing of 45o.  Alternate slots are longer than the intervening slots.  The segments between successive slots have a circular aperture and there is a further circular aperture at the centre of the disc.  These features are identical with the features determining the appearance of the article in the present registration identified as A in the Attachment.   The illustrations are not perfect but they are sufficiently clear to make that conclusion incontrovertible to an objective viewer.  Careful viewing of the illustrations concerned is required but that necessity does not preclude or cast in doubt the above conclusion.  I appreciate that the disc‑shaped members of DIDACTICO are used in a different manner to the corresponding member of the present set. However, as I have said, function is irrelevant in considering design.
         The article illustrated in Design Registration No. 56950 does not have an identity of appearance with any of the articles illustrated in the present registration.  Moreover, I am not entirely clear as to the design or designs applied to those articles in view of the fanciful additions to those articles.  In view of my finding in respect of the other material lodged, I do not need to consider this registration further.
         In the result, I find the design applied to one of the articles in the plurality of articles illustrated in the present registration is not new or original when that design is considered as being constituted by the totality of the features of shape, configuration ornamentation or pattern applied to that article.  As I have indicated, I consider that finding to constitute an adverse finding under sub‑sec 27A(9).  Accordingly, I refuse to extend the period of registration.            

C.H. Friemann