Icon Plastics Pty Ltd - [2007] ADO 2

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS, WITH REASONS

Re:Design Registration number 303361 - Electrode Plate Cover Edge Strip - in the name of Icon Plastics Pty Ltd.

Delegate:	Terry Williams
Representation:	Applicant: J Roger Green and Belinda Wadeson of Watermark Patent & Trade Mark Attorneys, Melbourne.
Decision:	Registered design new and distinctive, not to be revoked

Background

The refinement of copper to a level of purity such as is used for copper wire requires, typically, electrolysis in a hot sulphuric acid bath, with pure copper being deposited on a cathode which, in a typical industrial application, is a stainless steel plate, 1m x 1m x 3mm thick. This plate is partly immersed in the acid bath and copper is deposited. The copper will tend to form a ‘skin’ on the steel plate, this skin growing to some 7mm thick before the process is terminated. Even so, the copper skin can be stripped off, using a hydraulic ram to flex the plate, provided the copper is allowed to form only on two faces and one edge of the plate. The object, in other words, is to prevent such deposition on the remaining two edges of the plate, which would lock the copper around the cathode as a solid assemblage. The prevention of electro-deposition of copper on the remaining edges is the entire purpose of the cover strip the subject of the present design registration.
The registered design appears as follows

and the application for registration sets out the following statement of newness and distinctiveness in terms of s 19 of the Designs Act 2003 (“The Act”):

“Novelty resides in the internal cross-sectional shape of the electrode plate cover edge strip of indefinite length as shown in the drawings.

The registration, 303361, is owned by Icon Plastics Pty Ltd (“Icon”). The relevant application for registration was filed on 17 Feb 2005.
Icon has requested examination of the registration. I will come, below, to the legislative framework but for present purposes it is enough to note that, in furtherance of this examination, a delegated examiner of designs has reported that grounds for revocation exist because the registered design is “substantially similar in overall impression” to an earlier registration, 305113[1] (“the earlier design”), which is also owned by Icon. As such, it is said that registration 303361 is not “new and distinctive”, and ought to be revoked.
[1] The scheme of the Act is such that the prior application has matured into a registration with a numerically higher number.
The patent and trade mark attorneys for Icon, Watermark, made written submissions to the examiner, who has continued unchanged in her view, which she supported in two further reports. The owner therefore requested to be heard on the matter. I was assigned to conduct that hearing and am to decide the matter, under delegation from the Registrar of Designs. At that hearing, the owner was represented by J Roger Green and Belinda Wadeson, both of Watermark.
The owner’s arguments…

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 Icon Plastics Pty Ltd

Details

AGLC: Icon Plastics Pty Ltd [2007] ADO 2
Case: [2007] ADO 2
Decision Date: 5 July 2007

CaseChat Overview and Summary

In the matter of design registration 303361 for an Electrode Plate Cover Edge Strip, the court was tasked with determining whether the design was new and distinctive as required by the Designs Act 2003, and thus should not be revoked. Icon Plastics Pty Ltd, the owner of the registered design, requested an examination of the registration after a delegated examiner of designs reported that grounds for revocation existed due to the design being substantially similar to an earlier registration, 305113, also owned by Icon. The primary issue was whether the registered design was new and distinctive when compared to the prior art base, including the earlier design.

The court examined whether the earlier design was part of the prior art base, which would be considered in assessing whether the design was new and distinctive. Icon's representative argued that the earlier design should be excluded from the prior art base, but the court found that the earlier design was indeed part of the prior art base and must be considered.

The court then considered whether the design was distinctive, which required it to be assessed by the standard of an informed user, someone reasonably familiar with the nature, appearance, and use of products of the relevant kind. Icon's representative argued for a broader interpretation of the informed user standard, but the court found that the standard was best applied by postulating the view of a typical member of a sample of informed users, such as an engineer responsible for the design of the copper refining process.

The court found that while there was a great deal of similarity between the registered design and the earlier design, the registered design had internal features that would be readily distinguishable from the earlier design by a reasonably informed user. The court concluded that the registered design was new and distinctive compared to the prior art, including the earlier design, and thus should not be revoked.

The final outcome of the case was that the design registration 303361 was to be maintained as it was found to be new and distinctive. The examination of the design was taken as 'completed', and the provisions of section 67 of the Designs Act 2003 now applied.

Orders