JIMMY DIOGUARDI
[2013] ADO 5
•23 August 2013
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Application No. 11331/2013 in the name of JIMMY DIOGUARDI
| Delegate: | Debrett Lyons |
| Representation: | Applicant : self-represented |
| Decision: | 2013 ADO 5 |
Background
An application was filed under the Designs Act 2003 (“the Act”) to register a design in relation to a product described as “ ‘Universal’ business cards”.
Formalities examination of the application gave rise to a letter of intended refusal which explained that the design could not be registered in view of the combined effect of section 43 of the Act, the Design Regulations 2003, and the Crimes (Currency) Act 1981.
This matter came before me because the Applicant requested to be heard. The matter was set down for a telephone hearing in Canberra on June 2013. At the hearing the Applicant was self-represented.
Legislative framework
Section 43(1)(a) of the Act provides that the Registrar must refuse to register a design “if the design is a design, or belongs to a class of designs, prescribed by the regulations for the purposes of this paragraph.”
Paragraph 4.06 of the Design Regulations 2004 states that for paragraph 43(1)(a) of the Act, designs of a kind mentioned in subsection 19(1) of the Crimes (Currency) Act 1981 are prescribed.
Section 19(1)(a) of the Crimes (Currency) Act states that “a person shall not, without the consent, in writing, of an authorized person, design, make, print or distribute a business or professional card, notice, placard, circular, hand-bill, poster or other material that so resembles current paper money or an Australian prescribed security as to be capable of misleading a person into believing it is that current paper money or that Australian prescribed security.”
Discussion
On 26 July 2013 I wrote to the Applicant as follows:
I refer to the hearing which took place in relation to the captioned application on 2 July 2013 and, as promised that day, write to you before taking action to formally refuse the application.
Prior to the hearing the position taken by this Office was that your design must be refused for reasons set out in the Office letter dated 7 May 2013 which do not need to be restated here.
At the hearing it was essentially your submission that the reference to “a person” in section 19 of the Crimes (Currency) Act 1981 (hereinafter, “the Act”) should be read as meaning “a reasonable person”. I was told that this was a matter on which you had taken legal advice albeit that I was not provided with any authority for that construction.
You relied upon paragraph D05.5 of the Designs Examiners’ Manual and on material you gathered and submitted prior to the hearing.
I expressed my reservations concerning your submission as to the nature of the “person” referred to in section 19 of the Act. Those reservations remain. Research since the hearing shows me that, in broad terms, criminal codes in Australia (the Act being one) use the terms “person”, “ordinary person” and “reasonable person”, where required, and employ tests which measure the conduct of individuals by reference to one or other of those terms. To my mind, it is not unreasonable to assume that if the draftsmen of the Act meant to use a “reasonable person” test they would have done so. Instead they simply referred to a person and I see no reason to add the gloss you advocate.
The test in terms of section 19 is then whether the resemblance between current paper money and the other material is such as to be capable of misleading a person into the relevant belief. To my thinking, it is the capacity to mislead which is safeguarded against and for that added reason there is no reason to further qualify the character of the relevant person as “reasonable” or “ordinary” or other.
Moreover, section 19 creates an offence where there is a misleading reproduction of paper notes on business cards, professional cards, placards, circulars and other material. None of those items would to my mind be the type of material which, of itself, is very likely to be confused with paper money and so, once again, I see no reason to limit the relevant person to someone who must have reasonable sensibilities.
Further, I would direct you to the information produced by the Reserve bank of Australia at , which states, amongst other things, that:
The legislation relevant to banknote reproductions includes the Crimes (Currency) Act 1981 and the Copyright Act 1968.
The Reserve Bank of Australia provides the consent guidelines below as a way of assisting people who wish to reproduce or create images of banknotes to minimise the risk of non-compliance with the relevant legislation. However, it will not remove the risk of non-compliance altogether. For example, there may still be a breach of moral rights – see the last paragraph of the guidelines below for more details.
…The guidelines do not constitute formal legal advice. Persons and entities choosing to reproduce or create images of Australian banknotes should take their own legal advice about the relevant legislation.
The website reference goes on to state that:
The Reserve Bank of Australia will not consider requests for approval of specific reproductions or images or of the use of reproductions or images in a particular context. Any such requests will be returned to the person seeking approval without a view being expressed by the Reserve Bank of Australia. This cannot be interpreted as express or implied approval of the reproduction or image or express or implied confirmation that all relevant conditions have been met. The fact that the Reserve Bank of Australia has received and returned without comment a request for approval of a specific reproduction or image will not prevent the Reserve Bank of Australia later objecting to the reproduction or image on the grounds that one or more relevant conditions has not been met. If there is any doubt about whether a proposed reproduction or image meets the relevant conditions, then the safest course is not to proceed with the reproduction or image.
Those guidelines state that the Reserve Bank of Australia consents to the use of reproductions and images or partial images of past and present Australian banknotes that meet certain conditions. The first condition is that the reproductions or images must be less than three-quarters or greater than one and a half times the length and width of the genuine banknote they reproduce. A review of the representations of your design application shows that this condition is not met. At any rate, registered designs are not granted for any specific size. Therefore, should this application proceed to registration, the scope of your registered design would certainly include business cards of a size that would offend this condition.
More fundamentally, it is the role of the Registrar (and, in this matter by reason of delegation from the Registrar, my responsibility) to refuse to register certain design which do not comply with the Designs Act 2003. By reason of section 43(1)(a) of the Designs Act 2003, I am required to determine whether your design is “a design, or belongs to a class of design” prescribed by paragraph 4.06(c) of the Design Regulations 2004 which, in turn, refers to “designs of a kind” mentioned in section 19(1) of the Act.
I am required to consider that question from the perspective of the Designs Act, a civil (rather than criminal) legislative code and what comes with that is the application of a civil standard of proof on matters of which I should be satisfied. The civil standard of proof requires me to measure questions on the so-called “balance of probabilities” and applying that standard I am of the thinking that your design is more likely than not to be of the kind described by section 19(1) of the Act and should therefore be refused.
On 10 August 2013 and within the period I had set for final response to my letter, the Applicant wrote to the Office.
The letter does not address the concerns expressed, nor provide reasoned legal submissions of any kind. In short, the letter:
(i) makes observations on the matter shown on Australian currency notes which are irrelevant to the central issue before me;
(ii) offers to amend the dimensions of the representations in a way perceived by the Applicant as avoiding offence but which would not remove the ground for refusal for reasons already stated in my letter (and, as I understand it, later reiterated by the Office when it was contacted by telephone by the Applicant);
(iii) offers an undertaking as to how the Product bearing the design might be put to use, an undertaking which neither the Registrar nor this Office is empowered to police or enforce, and which in any event does not address the issue raised by the legislation; and
(iv) asks the Registrar to exercise some type of discretionary power to nonetheless accept the application.
10. None of those submissions assist the Applicant. For the sake of completeness, I add here that nothing else put before me assists the Applicant. The Owner’s reliance upon paragraph D05.5 of the Manual and in particular the passage which states that “the mere fact that a design contains a representation of currency does not trigger this prohibition” is misplaced since that statement is immediately qualified by the statement that “the representation must be such that a person could be misled into thinking that the design involved actual money.” I have already written on that point.
11. Nor does material gathered and filed by the Applicant prior to the hearing help. That material consists essentially of a long list of signatories to a document created by the Applicant which is said to show that reasonable people would not be misled in the relevant way. The document is not evidence in any formal sense and can be given very little weight for a number of reasons. Had it been formalized it would not have replaced my findings on the meaning to be given to “a person”. It has no bearing on the final outcome.
Decision
12. The application is refused.
Debrett Lyons
Hearing Officer
Design Hearings
23 August 2013
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