John Michael Jarvie v Comtec Industries Pty Ltd - [2018] ADO 5

DESIGNSACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Request for revocation of registration by John Michael Jarvie of design numbers 201515406 and 201616328 both in the name of Comtec Industries Pty Ltd

DELEGATE:

Adrian Richards

REPRESENTATION:

Requestor: Robert Wuff and Derek Baigent of Griffith Hack

Registered Owner: Walsh & Associates (did not make submissions)

DECISION:

2018 ADO 5

Request for revocation of two designs pursuant to section 51 of the Designs Act 2003 (Cth) – whether requestor is sole person entitled to be the owner of the designs – whether requestor is sole or joint designer of the designs – whether requestor was employed by the registered owner or an independent contractor – requestor found to be the sole designer and entitled to be recorded as the owner of both designs – whether the Registrar of Designs has discretion to alter the register to change ownership in this circumstance – no such power found – designs revoked and declaration made pursuant to section 52(2) naming the requestor as the entitled person

Background

This decision with reasons concerns a request for revocation on the basis of entitled persons (‘the Request’) under s 51 of the Designs Act 2003 (Cth) (‘the Act’) of design numbers 201515406 and 201616328 (‘the Designs’). The Request was filed on 4 May 2017 by Mr John Michael Jarvie (‘the Requestor’).1 The Request asserts that the Requestor is the sole designer of both designs, and that
because of this he is the sole person entitled to be entered on the Register of Designs as their owner.
On 25 May 2017 a delegate of the Registrar of Designs wrote to the registered owner of the Designs, Comtec Industries Pty Ltd (‘the Owner’) at its then address for service, Anderson-Taylor & Associates. The letter asked whether the Owner wished to contest the claims made in the Request.

1 Also included in the Request was design number 201415843. On 9 June 2017 the Requestor withdrew his request for revocation of that third design, noting that its term of registration had ceased.

Three days later, this office received a request to change the address for service of the Owner in favour of Walsh & Associates. This request asked that all future correspondence be sent to that firm, but did not mention the recent letter from the delegate. Walsh & Associates later confirmed in a telephone call that the Owner did indeed intend to contest the claims made in the Request.
As a result of this new information, the delegate issued directions to the parties on 25 July 2017 which set out the practice and procedure to be followed in deciding the Request. In accordance with the terms of those directions, the Requestor filed evidence in support of the Request, the Owner then filed evidence in answer to the evidence in support, and the Requestor filed evidence in reply to the evidence in answer.
With the evidence stages having been completed, on 12 June 2018 the delegate…

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

Case: [2018] ADO 5
Decision Date: 31 October 2018

CaseChat Overview and Summary

John Michael Jarvie sought revocation of two design registrations owned by Comtec Industries Pty Ltd. The dispute involved the legal ownership of the designs, and whether Jarvie was the sole designer and entitled to be the registered owner. The court found that Jarvie was the sole designer and the rightful owner of the designs. The court analyzed the evidence and statutory definitions to determine that Jarvie conceived of the designs independently, and that the other listed designers had not actually designed the registered designs. The court also found that Jarvie had not assigned his rights in the designs to Comtec. However, the court found it did not have the power to transfer the design registrations to Jarvie. The court revoked the design registrations and made a declaration that Jarvie was the entitled owner. The court awarded costs to Jarvie against Comtec.

Orders