Juwel Aquarium GmbH & Co. KG
[2010] ADO 3
•14 December 2010
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Examiner’s objection to Design Registrations No. 312096, 312113, 312493, 312494, 312495 and 312480, all in the name of Juwel Aquarium GmbH & Co. KG
| Delegate: | Debrett Lyons |
| Representation: | Greg Turner of Spruson & Ferguson, Patent & Trade Mark Attorneys |
| Decision: | 2010 ADO 3 |
Background
This matter came before me in Sydney on 21 July 2010 because Juwel Aquarium GmbH & Co. KG (‘the Owner’) had requested to be heard in relation to matters raised during examination of its design registrations no. 312096, 312113, 312493, 312494, 312495 and 312480 (‘the Registrations’ and the designs disclosed therein as ‘the Designs’).
Following examination, the Designs were found not to be new or distinctive because they were substantially similar in overall impression to designs in the prior art base. At the hearing, the Owner was represented by Greg Turner of Spruson & Ferguson, Patent & Trade Mark Attorneys.
Examination
The Owner requested examination of the Registrations under section 63(1) of the Designs Act 2003 (“the Act”). Under section 65(2)(a), examination requires the Registrar to consider whether the Registrations should be revoked because they do not relate to registrable designs. 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. The priority date of the Registrations is 9 October 2006.
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.
A first examination report dated 9 January 2008 alleged that the Designs were not new and distinctive in view of corresponding European (OHIM) design registrations (“the European Registrations”), all belonging to the Owner and all predating the Registrations by a period too long to enable the Registrations to have claimed Convention priority from the comparable European Registrations.
Nonetheless, a response dated 25 January 2008 had submitted that the Designs were, by reason of the special provisions of section 18, not to be treated as being other than new and distinctive.
A second examination report dated 3 September 2008 resisted that argument for the following reasons:
§ Section 18 did not apply to the Designs because they were not “corresponding designs” within the meaning of section 77 of the Copyright Act 1968;
§ Section 18 did not apply to the Designs because the Designs had not been industrially applied in Australia or elsewhere as per section 77 of the Copyright Act.
The report in each case concluded that “to establish your entitlement to rely on s. 18 you are invited to provide evidence in declaratory form, from a person with direct knowledge of the relevant information:
oasserting that the present design was not applied to any product or article anywhere in the world prior to the priority date if the present design – 9 October 2006; and that offers for sale of products bearing the design were not made anywhere in the world before that date; or
oproviding details about the products to which the design was applied, or were offered for sale bearing the design; and the numbers of products bearing the design sold anywhere in the world prior to the priority date.”
At or about this same time the Owner asked for its requests for examination to be withdrawn. The Office responded, rightly pointing out that once an examination report had issued it was not then possible for the Registrations to return to their unexamined state.
10. In consequence, the Owner responded to the second examination report stating that (i) it would shortly provide evidence “which will establish the present design is a ‘corresponding design’ including the devolution of title”, and (ii) section 77(1)(a) of the Copyright Act had no bearing on examination of the matter since it related only to copyright infringement and not to design registrability. Instead, it is only Regulation 17 which is relevant and it makes no mention of the geographical scope of the prior art base. The Owner submitted that “industrially applied is relevant to Australia only. This would be consistent with Section 15 of the Designs Act that considers the prior art base as not including display of the articles as part of the prior art base.”
11. After further correspondence, including a third examination report which does not require précis here, the Owner asked to be heard. Prior to the hearing, the Owner submitted in relation to each Registration what it described as “a Deed of Confirmation establishing the [the Owner] is the owner of the copyright in respect of the design.”
Reasoning
12. In his submissions, Mr Turner conceded that the European Registrations carried illustrations substantially the same as the Designs. I can not discern any noticeable differences between the corresponding designs and so find that for the purposes of section 16, the Designs are neither new nor distinctive over the European Registrations.
13. The Owner nonetheless sought to preclude the citations of the European Registrations on the basis of section 18. Section 18(2) states that a design is not to be treated as being other than new and distinctive, or as having been published, by reason only of any use previously made of the artistic work, unless:
(a)the previous use consisted of, or included, the sale, letting for hire or exposing for sale or hire of products to which the design had been applied industrially[1] … ; and
(b)the previous use was by, or with the consent of, the owner of the copyright in the artistic work.
[1] Section 18(3) states that applied industrially has the meaning given by regulations under section 77 of the Copyright Act 1968.
14. Argument between the Owner and this Office centered on the point of whether or not the Designs had been applied industrially. Submissions made during examination, reiterated and expanded upon at the hearing, focused on the question of whether industrial application was limited to use in Australia or not.
15. I leave to one side for the present that not-unimportant question, mindful that section 18 carries with it certain threshold conditions, namely, that copyright subsists in the artistic work (section 18(1)(a)) and that the application is made by, or with the consent of, the owner of that copyright for registration of a corresponding design (section 18(1)(b)).
Subsistence of copyright in artistic work
16. The Registrations, which nominate the designer as Maik Hartje, are for a product described as “An Aquarium Cladding Sheet”, shown by the representations to be a two-dimensional printed or photographic scenic or ornamental backdrop for the rear wall of an aquarium tank. The Registrations carries a statement of Newness and Distinctiveness which in each case reads:
Newness and distinctiveness is claimed in the features of pattern and/or ornamentation of an aquarium cladding sheet as illustrated in the accompanying representations.
17. Section 5 of the Act defines an “artistic work” as having the same meaning as in the Copyright Act. Section 10 of the Copyright Act defines an artistic work as “a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not”. In my assessment[2], the Designs are either drawings[3] or photographs[4], a finding supported by the Statement of Newness and Distinctiveness.
[2] Simple geometric shapes have, for example, been held to be artistic works in which copyright might subsist: see Re Karo Step Trade Mark [1977] RPC 255.
[3] "drawing" includes a diagram, map, chart or plan : s.10 Copyright Act
[4] "photograph" includes photo-lithograph and a work produced by a process similar to photography: s.10 Copyright Act.
18. However in order for section 18 to apply, not only must the Designs qualify as artistic works, copyright must also subsist in those works. Section 32 of the Copyright Act states that copyright subsists in an original artistic work. The Courts have decided that the threshold of originality in artistic works is low; what is primarily required is that the creator of the work should not have copied it.[5]
[5] see University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608–10; (1916) 1B IPR 186 at 191, and Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511; 1A IPR 308 at 320 per Dixon J.
19. As I have noted, Deeds of Confirmation were lodged with the Office before the hearing. With the exception of the individual Registration numbers, the Deeds are in identical terms. The parties to the Deed are the Owner (defined therein as “Employer”) and Maik Hartje (defined therein as “Employee”). The parties have a common address in Germany which I can safely assume to be the corporate address of the Owner. Hartje warrants “that he is the first and true author of the design” and the Deed recites that Hartje “was at all material times employed by the Employer and made the design pursuant to his Contract of Employment with the Employer pursuant to which his Employer has all right, title and interest in and to the design, including:
§the right to make applications for registration or other protection in relation to the design; and
§ownership of the copyright I any drawings and illustrations relating to the design created by the Employee …”
20. For the purposes of section 32 of the Copyright Act, I am satisfied that the Designs are original artistic works, there being no evidence before me to suggest that they were copied from some other work.
21. Section 32 of the Copyright Act also relies on a distinction between published and unpublished works. Section 29 of the Copyright Act deals with publication and states that “for the purposes of this Act, a literary, dramatic, musical or artistic work, or an edition of such a work, shall be deemed to have been published if, but only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public”.
22. In cases such as these, where for all intents and purposes the artistic works and the Designs are one and the same, there are delicate arguments about (i) whether it is the work or the design which is published, (ii) whether the excluded use for the purposes of section 18(2) is use of the work or the design, and (iii) whether there has been industrial application of a “corresponding design” within the meaning of section 77 of the Copyright Act.[6]
[6] See, for example, paragraphs D07.6.3.2 and following of the Design Examiners’ Manual.
23. For reasons which emerge, I need not be distracted by those questions and the sometimes difficult case law which informs them. At the hearing Mr. Turner conceded that products incorporating the Designs had been sold or made available to the public and so, for the purposes of testing the subsistence of copyright, I will proceed on the basis that there has been publication of the works. Accordingly, section 32(2) of the Copyright Act states that “where an original literary, dramatic, musical or artistic work has been published:
(a) copyright subsists in the work; or
(b) if copyright in the work subsisted immediately before its first publication—copyright continues to subsist in the work;
if, but only if:
(c) the first publication of the work took place in Australia;
(d)the author of the work was a qualified person at the time when the work was first published
24. Paying regard in particular to section 32(2)(c), the Owner is a German company and its European Registrations were filed on 8 July 2005. Based on the material before me at this point, I would very much doubt whether first publication of the works took place in Australia.
25. Nevertheless, section 184(1) of the Copyright Act states that regulations may make provision applying any of the provisions of this Act (other than those of Part XIA) specified in the regulations, in relation to a country (other than Australia) so specified, so that the provisions apply in relation to literary, dramatic, musical or artistic works or editions first published, or sound recordings or cinematograph films made or first published, in that country in like manner as those provisions apply in relation to literary, dramatic, musical or artistic works or editions first published, or sound recordings or cinematograph films made or first published, in Australia (section 184(1)(a)).
26. Regulation 4(1) of the Copyright (International Protection) Regulations 1969 does what is allowed by section 184(1)(a). It states that in relation to a “work, and subject-matter other than a work, made or first published in a foreign country … a provision of the Act that applies in relation to a literary, dramatic, musical or artistic work or edition first published, or a sound recording or cinematograph film made or first published, in Australia (an Australian work or subject‑matter) applies in relation to a literary, dramatic, musical or artistic work or edition first published, or a sound recording or cinematograph film made or first published, in a Berne Convention country, a Rome Convention country, a UCC country, a WCT country, a WPPT country or a WTO country (a foreign work or subject‑matter ) in the same way as the provision applies, under the Act, in relation to an Australian work or subject‑matter; and as if the foreign work or subject‑matter were made or first published in Australia.”
27. Although it seems to me likely that the artistic works corresponding with the Designs were first published in Germany or another country which, at the relevant time, was a signatory to one of those aforementioned treaties or conventions, there is nothing in the official records at this Office, nor anything which emerged at the hearing, which could let me make that determination with any authority.
28. Since the critical application of section 18 of the Act hinges on the subsistence of copyright in the artistic works and since that determination depends on what I have just set out, it would be inappropriate for me for that reason alone to direct the issuance of a Certificate of Examination.
29. Equally, I consider that it would be unfair of me to refuse to issue that Certificate without first giving the Owner an opportunity to establish, if possible, that copyright subsists in the artistic works by reason of their place of first publication.[7] It is for the sake of completeness that I made a full analysis of the issues but, as I will come to explain, it is clear that the Owner’s position is ultimately flawed.
[7] 69 Certain material may be provided to Registrar
Qualified person
30. For copyright to subsist in the artistic works, section 32(2)(d) of the Copyright Act requires that the author[8] of the work was a “qualified person” at the time when the works were first published.
[8] Note: the author, not the Owner, in spite of the operation of section 35(6) of the Copyright Act for other purposes.
31. Section 32(4) of the Copyright Act defines a qualified person as an Australian citizen, an Australian protected person or a person resident in Australia, but section 184(1)(c) extends, by way of regulations, the provisions of the Copyright Act to persons who, at the material time, were citizens or nationals of other countries in the same manner that they apply to persons who are Australian.
32. Regulation 4 of the Copyright (International Protection) Regulations 1969 does what is allowed by section 184(1)(c). It states, relevantly:
(3) Subject to these Regulations, a provision of the Act relating to a work or subject-matter other than a work that applies in relation to a person who, at a material time, is an Australian citizen applies in relation to a person who, at a material time, is a citizen or national of a Berne Convention country, a Rome Convention country, a UCC country, a WCT country, a WPPT country or a WTO country (a foreign citizen):
(a)in the same way as the provision applies, under the Act, in relation to an Australian citizen; and
(b) as if the foreign citizen were an Australian citizen.
Section 3 of the Copyright (International Protection) Regulations defines the phrase, “at a material time”, to mean:
(a) in relation to, or in relation to the application of the Act in respect of, a work or subject matter other than a work that is unpublished:
(i)at the time when the work or subject-matter other than a work was made;
34. The Deeds of Confirmation do not state the citizenship or nationality of Hartje. Unhelpfully, his given address is the same corporate address as that of the Owner. Without further evidence I would not be prepared to make a finding that Hartje was a qualified person.[9]
[9] At the time he created the works, another matter of which there is no evidence.
Further provisos: applications by owner of copyright in corresponding design
35. As previously mentioned, section 18(1)(b) of the Act requires, amongst other things, that the Designs are not to be treated as other than new and distinctive provided that the applications were made by, or with the consent of, the owner of the copyright for registration of a corresponding design.
36. During the course of examination, the Owner stated that it would provide evidence “which will establish the present design is a ‘corresponding design’ including the devolution of title”.
37. Section 35 of the Copyright Act states that the author of an artistic work is the owner of the copyright in the work, subject to the proviso that when a work is “made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright”. In addition, those arrangements can be excluded or modified by agreement.
38. Having regard to the terms of the Deeds of Confirmation, section 18(1)(b) is satisfied to the extent that the applications for the Registrations were made by the Owner.
39. Next, section 5 of the Act states:
corresponding design, in relation to an artistic work, has the same meaning as in Division 8 of Part III of the Copyright Act 1968.
40. Section 74 of the Copyright Act forms part of Division 8, Part III of that Act. It states that “in this Division, ‘corresponding design’ , in relation to an artistic work, means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003”.
The examiner argued that section 18 did not apply to the Designs since Division 8, Part III of the Copyright Act defines a “corresponding design” with reference to features of shape or configuration. The product in each case, being a cladding sheet as described above, does not entail features of shape or configuration and so is not a corresponding design.
42. There ends the matter and I need not examine the argument about industrial application. The fact that the Designs are defined in terms of pattern and/or ornamentation excludes them from the operation of section 18 in a way which can not be remedied by amendment or further evidence or argument.
Decision
43. Section 68 of the Act states that if the Registrar has examined the design, and is satisfied that a ground for revocation of the registration of the design has been made out and the ground would not be removed if the Register were amended as proposed in a request under section 66, then provided that the Owner has been heard on the matter, the Registrar must give notice stating that the Registrations are revoked and publish that fact along with a statement that the Designs are taken never to have been registered. As indicated in my reasons just given, the Registrations contain defects that cannot be removed by amendment.
44. Since an appeal lies to the Federal Court from this decision under section 68, it is my intention to publish notice of revocation of the Registrations one month from the date of this decision. If, before the registrations are revoked, an appeal has been made to the Federal Court then unless that appeal is discontinued the final disposition of the Registrations will lie with the decision of the Court.
Debrett Lyons
Hearing Officer
Design Hearings
14 December 2010
(1) A person may provide to the Registrar material relating to whether a registered design is new or distinctive within the meaning of Division 1 of Part 4 of Chapter 2.
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