K2 Office Pty Ltd and Adelaide Tooling Pty Ltd v Justin Peter Brown

[2018] ADO 4

DESIGNSACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

ReRequest for examination by K2 Office Pty Ltd and Adelaide Tooling Pty Ltd of design number 201514265 (registered design number 363869) in the name of Justin Peter Brown

DELEGATE:                 Robert Wilson

REPRESENTATION:       Owner: Self represented – written submissions

Examination Requestors: Joshua Simons of Thomson Geer

DECISION:                   2017 ADO 4

DesignsAct2003 (Cth) – Third party request for examination of a design under s 63 – design not distinctive when compared to prior art base – registration to be revoked

Background

The Application

1.On 19 August 2015 (‘the Priority Date’) Office Portfolio Pty Ltd filed an application under the Designs Act 2003 (Cth) (‘the Act’). The design number allocated to the sole design in the application was 201514265 (‘the Design’). The Design was registered on 27 August 2015 and allocated registration number 363869. The product to which the Design relates is described as a ‘Chair control mechanism’. No Statement of Newness and Distinctiveness was included in the application. Office Portfolio Pty Ltd assigned ownership of the Design to Justin Peter Brown (‘the Owner’) by deed executed on 4 February 2016. The Assignment was recorded by the Office on 17 March 2016.

2. The following are the representations of the Design contained in the application:

Requests for examination

3.On 12 December 2017 a request for examination of the Design was filed by the Owner. The Design was duly examined and a Certificate of Examination was issued on 24 January 2018.

4.As is permitted under s 63 of the Act, on 15 February 2018, K2 Office Pty Ltd (‘K2’) and Adelaide Tooling Pty Ltd (‘the Examination Requestors’) jointly requested examination of the Design. The request included a Statutory Declaration made on 15 February 2018 by Darryl Burpee, the Managing Director of K2, with Exhibit DB-01 (‘Burpee 1’). The exhibit to Burpee 1 includes a number of tabs labelled Tab 1 to Tab 7. The Design was examined again and no grounds for revocation were found. By correspondence dated 17 May 2018 the Examination Requestors were notified accordingly. As is their right, on 12 June 2018 the Examination Requestors requested on oral hearing in respect of the examination.

Hearing and evidence

5.The matter was set down for hearing on 6 September 2018. I was allocated to hear the matter as Delegate of the Registrar of Designs. The Examination Requestors were represented at the hearing by Joshua Simons of Thomson Geer. The Owner chose to rely on written submissions and did not appear at the hearing.

6.The Examination Requestors provided a written summary of submissions prior to the hearing which included the following declarations:

·     Burpee 1;

·     Statutory Declaration made on 22 August 2018 by Darryl Burpee with Exhibit DB2-01 (‘Burpee 2’). The exhibit to Burpee 2 includes a number of tabs labelled Tab 1 to Tab 4.

·     Statutory Declaration made on 29 August 2018 by Christian Nettleton, a Director of Turnco Industries (Vic) Pty Ltd (‘Turnco’) which is a customer of K2, with Annexures 1 to 4 (‘the Nettleton Declaration’); and

·     Statutory Declaration made on 22 August 2018 by Tony Rogers, a Director of Woods Furniture Pty Ltd (‘Woods’) which is a customer of K2, with Annexures 1 to 3.

7. The Owner did not file any evidence.

The Legislative Framework

8.The Registrar must examine a registered design if any person requests that the Registrar do so.1 In examining a design the Registrar must consider whether a ground for revocation exists.2 The grounds for revocation include that the design is not a registrable design.3 A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.4 The prior art base for a design consists of:

(a)designs publicly used in Australia; and

(b)designs published in a document within or outside Australia; and

(c)designs in relation to which each of the following criteria is satisfied:

(i)the design is disclosed in a design application;

(ii)the design has an earlier priority date than the designated design;

(iii)the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.5

9.A design is new unless it is identical to a design that forms part of the prior art base.6 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.7 Section 19 of the Act provides some factors to be considered in assessing substantial similarity, and states:

(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 to the state of development of the prior art base for the design; and

(b)if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:

1 Designs Act 2003 (Cth) s 63(1).

2 Designs Act 2003 (Cth) s 65(1).

3 Designs Act 2003 (Cth) s 65(2)(a).
4 Designs Act 2003 (Cth) s 15(1).
5 Designs Act 2003 (Cth) s 15(2).
6 Designs Act 2003 (Cth) s 16(1).

7 Designs Act 2003 (Cth) s 16(2).

(i)have particular regard to those features; and

(ii)if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and

(c)if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and

(d)have regard to the freedom of the creator of the design to innovate.

(3)If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.

(4)In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).

(5)In this section, a reference to a person includes a reference to a court.

1. The ‘informed user’ was considered by Kenny J in Review 2 v Redberry Enterprise wherein her Honour stated:

   In summary, the standard of the informed user is an objective one. … The informed user is not an expert, but must be more than barely informed. The focus for consideration is on eye appeal and not on internal or less visible manufacturing features. …

   Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged.8

1. If a ground for revocation exists the Registrar must give the relevant parties a notice stating that the registration of the design is revoked and make an entry in the Register.9

8 (2008) 79 IPR 214, 221 [26]-[27], approved by the Full Federal Court in LED Technologies Pty Ltd v

Roadvision Pty Ltd [2012] FCAFC 3, [72].

9 Designs Act 2003 (Cth) ss 68, 115.

Discussion

1. The Owner has submitted that, ‘I, Justin Peter Brown, created the design of the product … Therefore I am entitled to be the Registered Owner of the Design’. It is unnecessary that I decide whether or not the Owner created the design: that question is not at issue here. What is at issue is whether the Design is a registrable design. As indicated by the discussion above, the Design is a registrable design if it is new and distinctive when compared with the prior art base as it existed before the Priority Date. The Requestors have submitted that the Design is not new and distinctive when compared to the prior art base, in particular that:

·     the Design is substantially identical to the ‘Steno-matic22 H/Duty 3 lever chair mechanism’ (‘the 22C-HD mechanism’); and

·     the 22C-HD mechanism was publicly used or published before the Priority Date.

1. Tab 2 of Burpee 1 is declared to be various photographs of the 22C-HD mechanism. Some examples of the photographs are provided below:

1. The 22C-HD mechanism as shown in the photographs appears to be identical to the Design. In any case, I am satisfied that the 22C-HD mechanism is at least substantially similar in overall impression to the Design. All that remains to be determined for the purposes of s 19 of the Act is whether the 22C-HD mechanism forms part of the prior art base for the Design.

1. It is stated by Mr Nettleton in the Nettleton Declaration that:

Through my involvement with [Turnco], I am familiar with both [the 22C-HD mechanism] and the ‘Bigboy HD Chair’, which uses [the 22C-HD mechanism]. Now shown to me, annexed hereto, and marked:

(a)    Annexure 1 are a bundle of photographs of the ‘Bigboy HD Chair’; and

(b)    Annexure 2 are a bundle of photographs of [the 22C-HD mechanism].

1. It is similarly stated by Mr Rogers in the Rogers Declaration that:

Through my involvement with [Woods], I am familiar with both [the 22C-HD mechanism] and the ‘Bigboy HD Chair’, which uses [the 22C-HD mechanism]. Now shown to me, annexed hereto, and marked:

(a)    Annexure 1 are a bundle of photographs of the ‘Bigboy HD Chair’; and

(b)    Annexure 2 are a bundle of photographs of [the 22C-HD mechanism].

1. The photographs in Annexure 2 of both the Nettleton Declaration and the Rogers Declaration are the same photographs that appear Tab 2 of Burpee 1. I am satisfied that the three declarations just discussed are referring to the same mechanism.

1. Mr Nettleton further declared that Turnco purchased and resold the 22C-HD mechanism from K2 and its predecessor business operated by Klasse Pty Ltd, since at least 20 March 2015. Annexure 3 to the Nettleton Declaration is declared to be:

   two purchase orders (dated 20 March 2015 and 5 August 2015) that evidence that, on or about those dates, [Turnco] purchased the following items from K2 …:

   (a)    ‘BIGBOY M/B MINIKIT STENO 22C’ (100 units on 20 March 2015 and 30 units on 5 August 2015);

   (b)    ‘BIGBOY H/B MINIKIT STENO22C’ (50 units on 20 March 2015 and 20 units on 5 August 2015);

   (c)    ‘BIG BOY MESH STENO 22C’ (20 units on 5 August 2015) Each of the above items contain [the 22C-HD mechanism].

The purchase orders are as declared and I have no reason to doubt Mr Nettleton’s statement that the items contain the 22C-HD mechanism.

1. The Rogers Declaration states that Woods purchased and resold the 22C-HD mechanism ‘since at least 2013’. Annexure 3 to the Rogers Declaration provides ‘a bundle of invoices and purchase orders’ to support Mr Rogers’ statements. While the documents provided in the annexure are difficult to read, I am satisfied that they do support Mr Rogers’ statements. For example, a tax invoice from K2 to Woods, dated 4 March 2015, includes 10 of STEN0MATIC22 H/DUTY 3 LEVER.

1. The Owner has submitted in respect of the photographs of the 22C-HD mechanism provided in the declarations discussed above:

   The photographs submitted are not dated (Or dated within the past month) and are in fact recent photographs of a mechanism with a product having been stripped down to appear like [the Design] and is not sold in situ as shown in the photos.

   These photos do not pre-date [the Design]. A simple search of the photograph jpg.properties will show that they were taken recently

   (emphasis in original)

It is not asserted by any of the declarants that the photographs were taken before the Priority Date. I take the purpose of the photographs solely to identify the type of mechanism in the photographs to be the same as the 22C-HD mechanism referred to

in the remainder of the declarations. I am satisfied that the photographs serve that purpose.

1. The Owner has submitted in respect of the 22C-HD mechanism that the design was never published, including that it was ‘Never available to the general public’. Section 15 of the Act is not limited to published designs. Specifically, s 15(2)(a) states that the prior art base for a design includes ‘designs publicly used in Australia’. The meaning of this expression plainly differs from ‘available to the general public’. ‘Designs publicly used in Australia’ is not defined by the Act. The apparently broader expression ‘design … used in Australia’ found in s 17 of the Designs Act 1906 (Cth) has on occasion been considered in the courts. For example:

   [I]f the circumstances relevant to the document or article in question are such that one may reasonably infer that the public were able to take advantage of and become acquainted with the features of the design that would be sufficient … [I]t will not in all cases be necessary, for the occasion to be described as ‘public’ or ‘open’, that a large number of persons have or have likely been able to avail themselves of the opportunity to comprehend the design in question.10

1. The evidence shows that the 22C-HD mechanism has, before the Priority Date, been sold by a manufacturer to a number of unrelated persons including a distributor and a company that further used it in the assembly of another product. Given all of this, the 22C-HD mechanism has in my view been ‘publicly used in Australia’ and forms part of the prior art base for the Design.

1. I am satisfied by the evidence provided by the Examination Requestors that the 22C-HD mechanism was sold to both Turnco and Woods as part of kits or as a stand-alone item before the Priority Date. I am also satisfied that the 22C-HD mechanism is substantially similar to the Design. Consequently, the Design is not distinctive when compared to the prior art base for the design. The Design is, therefore, not a registrable design and a ground for revocation of the registration of the Design has been made out.

10 Richsell Pty Ltd v Khoury (1994) 30 IPR 129, 135.

Decision

1. I am satisfied that a ground of revocation has been made out. I direct that design number 201514265 be revoked one month from the date of this decision. If the Registrar is served with a notice of appeal from this decision before that time, I direct that revocation shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. The Examination Requestors have sought an award of costs in their favour. I see no reason to depart from the general rule that costs follow the event. As the Examination Requestors have established a ground of revocation, I award costs against the Owner under s 127 of the Act.

Robert Wilson Hearing Officer

Hearings and Oppositions 29 October 2018