Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd

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FEDERAL COURT OF AUSTRALIA

Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd [2021] FCA 208

File number(s): QUD 607 of 2017
Judgment of: GREENWOOD J
Date of judgment: 12 March 2021
Catchwords: INTELLECTUAL PROPERTY – consideration of an appeal from the delegate of the Registrar of Designs revoking the registration of a design for application to a product called a “solar bollard” – consideration of whether the Registered Design lacked newness and distinctiveness having regard to the prior art base – consideration of whether the publication of emails to a group or cohort described as the Certified Installer Network amounted to a publication of the visual features of the design – consideration of whether members of the cohort fell under an obligation of confidence such that any publication of the visual features of the design to that group was not a publication of the design
Legislation: Designs Act 2003 (Cth), ss 5, 6, 7, 8, 15, 16, 19, 65 and 68
Cases cited:

Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37

Australian Medic‑Care Co Ltd (a company incorporated in Hong Kong) v Hamilton Pharmaceutical Pty Ltd (2009) 261 ALR 501

Coco v AN Clark (Engineers) Ltd [1969] 86 RPC 41

Key Logic Pty Ltd and Another v Blue Groper Investments Pty Ltd and Others (2019) 367 ALR 507

LED Technologies Pty Ltd v Roadvision Pty Ltd and Another (2012) 199 FCR 204

Review 2 Pty Ltd (in liq) and Another v Redberry Enterprise Pty Ltd (2008) 173 FCR 450

Saltman Engineering Co Ltd and Others v Campbell Engineering Co Ltd (1948) 65 RPC 203

RLA Polymers Pty Ltd v Nexus Adhesives Pty Ltd and Others (2011) 280 ALR 125
Division: General Division
Registry: Queensland
National Practice Area: Intellectual Property
Sub-area: Copyright and Industrial Designs
Number of paragraphs: 285
Date of last submission/s: 26 July 2019
Date of hearing: 23 May 2019
Counsel for the Appellant: Mr B Fitzpatrick
Solicitor for the Appellant: Bennett & Philp Lawyers
Counsel for the Respondent: Ms S Gatford
Solicitor for the Respondent: Synkronos Legal

ORDERS

QUD 607 of 2017
BETWEEN:

KEY LOGIC PTY LTD (ACN 099 244 078)

Appellant
AND:

SUN-WIZARD HOLDING PTY LTD (ACN 600 193 413)

Respondent

ORDER MADE BY:

GREENWOOD J

DATE OF ORDER:

12 MARCH 2021

THE COURT ORDERS THAT:

1.The appeal from the decision of the delegate of the Registrar of Designs given on 17 October 2017 is allowed. 

2.The decision of the Registrar’s delegate is set aside.

3.The parties file and serve written submissions as to the question of costs within 14 days. 

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.


REASONS FOR JUDGMENT

GREENWOOD J:

Background

  1. These proceedings are concerned with an appeal under s 68(6) of the Designs Act 2003 (Cth) (the “Act”) from a decision of the delegate of the Registrar of Designs (the “Registrar”) revoking the registration of a design for application to a product called a “solar bollard”:…

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Details
Case
[2021] FCA 208
Decision Date

CaseChat Overview and Summary

Key Logic Pty Ltd appealed to the Federal Court of Australia against a decision by the Registrar of Designs, which revoked their registration of a design for a product known as a "solar bollard". The key issues in the appeal were whether the design lacked newness and distinctiveness, and if the publication of emails to a group called the Certified Installer Network constituted a publication of the design's visual features. The court also needed to decide if the recipients of these emails were under an obligation of confidence, such that any disclosure of the design's visual features did not count as a publication.

The court considered the evidence of Mr Kedwell, who received several emails from Exlites, including one with a draft Confidentiality Agreement. Mr Kedwell testified that he signed the Confidentiality Agreement during a meeting with Exlites representatives. Although Mr Kedwell could not locate the signed document, he was confident it was a Confidentiality Agreement and that he signed it at the meeting. The court accepted Mr Kedwell's evidence that he signed the Confidentiality Agreement at the meeting. The court further examined the content of the emails, which included technical and other information about Exlites' products, and found that these emails did not disclose the visual features of the solar bollard design. Consequently, the court concluded that the publication of these emails did not amount to a publication of the design's visual features.

Ultimately, the court allowed the appeal, set aside the Registrar's decision, and ordered the parties to file and serve written submissions regarding costs within 14 days.

Orders

Orders of the court

1. The appeal from the decision of the delegate of the Registrar of Designs given on 17 October 2017 is allowed.

2. The decision of the Registrar’s delegate is set aside.

3. The parties file and serve written submissions as to the question of costs within 14 days.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

So it can be seen that Mr Fry, through Sun‑Wizard, has a direct commercial interest in a patent for a rival product that incorporates as an integer of claim 1 of the patent, the conical‑shaped diffuser created, as Mr Fry concedes, by Mr Arieni. The evidence of Mr Kedwell and Mr West As to the issue of confidentiality agreements, it is necessary to examine the evidence of Mr Kedwell and Mr West. Mr Kedwell received the emails of 10 February 2010, 15 February 2010, 17 February 2010, 21 April 2010 and 3 May 2010 (and in all probability the email of 26 May 2010). Mr Kedwell was a member of the CI Network. Mr Kedwell owned and operated Planelec Services Pty Ltd (“Planelec”) with his business partner, Mr Martin Swift, from 1996 until about 2012. Mr Kedwell says that in late 2009 or early 2010 he was contacted by Mr Arieni to discuss the potential for Planelec to become a distributor of the solar lighting products of Exlites including the Exlites solar lighting tower and solar bollards. Mr Kedwell and Mr Swift met with Mr Arieni and Mr Fry at the Exlites premises to discuss Planelec “potentially joining what Mike called the Certified Installers Network”. Mr Kedwell says that he remembers receiving a copy of a Confidentiality Agreement prior to the meeting “which Martin and I signed and brought to the meeting to give to Mike …”. Mr Kedwell says that he cannot recall if Mr Arieni “countersigned” the agreement at the meeting, but he recalls seeing that “Ian Fry was the witness for Mike’s signature on the [Agreement]”. Mr Kedwell says that he has not been involved in Planelec since 2012 when it was placed under administration and he has not been able to locate a copy of the Confidentiality Agreement. In his oral evidence, Mr Kedwell said that he received the Confidentiality Agreement on the day when he attended the meeting. Mr Kedwell was sure that the document was a Confidentiality Agreement. Mr Kedwell’s evidence was that he “definitely received it on the spot because I signed it when I was there” and “[i]t was there definitely when I signed it because we went into the boardroom to sign it at that point”. Mr Kedwell seemed a little confused about when he received the document and gave evidence that he assumed he “may have received it beforehand”, “but I definitely had one there when we signed it at the time”. Mr Kedwell was taken to a series of emails between Mr Arieni and Mr Kedwell including emails between 17 November 2009 and 25 November 2009. In the email dated 17 November 2009 from Mr Arieni to Mr Kedwell, Mr Arieni says: “Thank you for your time today and attached is an extract of the draft CI document”. Mr Arieni then sets out a range of information about the products and their components (technical and otherwise). Mr Kedwell responded on 24 November 2009 mentioning the “final agreements” for the “CIN” and sought from Exlites a “Memo of Understanding” between the two companies. Mr Arieni responded on 25 November 2009 confirming continuing discussions with Mr Kedwell concerning the opportunity for Planelec to be appointed as a Certified Installer for North Sydney to Port Macquarie subject to a final commercial agreement. Those emails are Exhibit 19.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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