Invacare Corporation - [2013] ADO 4

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Design Registration No. 339334 in the name of Invacare Corporation and examination thereof

Delegate:	Debrett Lyons
Representation:	Owner: Jeremy Dobbin of F. B. Rice & Co., Patent & Trade Mark Attorneys
Decision:	2013 ADO 4 Section 63 request for examination: design new but not distinctive; broken outline practice considered; registration to be revoked.

Background

Invacare Corporation (the ‘Owner’) is the owner of Design Regn. No. 339334 (the ‘Registration’ or the ‘Design’ as the context requires) filed on 19 September 2011 and claiming under regulation 3.06 a priority date of 28 March 2011 (the ‘Priority Date’) for a product described as “Wheelchair chassis”, carrying a statement of newness and distinctiveness (the ‘SOND’) which reads:
“Newness and distinctiveness reside in the features of the design shown in solid lines in the representations excluding those features shown in broken lines”.
At the request of the Owner the Registration was examined and an examination report dated 30 January 2012 raised grounds for revocation. The examiner reported that the Design was not new or distinctive because it is substantially similar in overall impression to disclosures in the prior art base, namely, the Owner’s earlier registrations AU 336950, AU 336927, and AU 336909, also concerned with a wheelchair chassis design.
The Owner asked to be heard when the Office did not appear to have altered its position on the newness and distinctiveness of the Design.
A hearing took place in Canberra on 3 June 2013 at which the Owner was represented by Jeremy Dobbin of F. B. Rice & Co., Patent and Trade Mark Attorneys.
I note here that prior to the hearing the Owner had filed a request to amend the product name to “Front frame of wheelchair chassis” and that, at the time of the hearing, that request had not been actioned.

Legislative framework

Under section 65(2)(a), examination requires the Registrar to consider whether the Registration should be revoked because it is not a registrable design. Section 15(1) of the Act states that a design is a registrable design if it is new and distinctive when compared with the prior art base for the design as it existed before the Priority Date of the Design.
Section 16 of the Act provides that a design is new unless it is identical to a design that forms part of the prior art base for the Design and section 16(2) states that:
A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.
Section 19 elaborates on substantial similarity:

Factors to be considered in assessing substantial similarity in overall impression
(1)If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2)The person must also:
(a)have regard…

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.

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Details

AGLC: Invacare Corporation [2013] ADO 4
Case: [2013] ADO 4
Decision Date: 23 August 2013

CaseChat Overview and Summary

Invacare Corporation sought to register a design for a wheelchair chassis under the Designs Act 2003. The design was filed on 19 September 2011, claiming priority from 28 March 2011. The design registration in question is Registration No. 339334. An examination report issued on 30 January 2012 raised concerns that the design was neither new nor distinctive, as it was substantially similar to the corporation's earlier design registrations AU 336950, AU 336927, and AU 336909. The corporation requested a hearing to contest the decision. The main legal issues revolved around whether the design was new and distinctive as per sections 15(1), 16, and 16(2) of the Designs Act 2003. The hearing officer, Debrett Lyons, concluded that while the design was new, it was not distinctive when compared with the prior art. The officer considered the use of broken lines in the design representations, the statement of newness and distinctiveness, and the overall impression of the design as perceived by an informed user. The officer found that the design was substantially similar in overall impression to the prior art designs, despite minor differences in the front caster arms. Consequently, the design registration was revoked.

In summary, the decision by Debrett Lyons resulted in the revocation of Design Registration No. 339334 on the grounds that, while the design was new, it was not distinctive when compared to the prior art. The decision considered the use of broken lines, the statement of newness and distinctiveness, and the overall impression of the design as perceived by an informed user.

Orders