Kmart Australia Limited - [2011] ADO 2

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Opposition by Kmart Australia Limited to registration of design applications no 11120/2010 and 11121/2010 for CHOPPING BOARDS and BOWLS - filed in the name of Joseph Joseph Limited.

Delegate: Heath Wilson

Representation: Decision on the written record.

Decision: 2011 ADO 2
Section 137(2)(a) of the Designs Act 2003 - Application for extension of time to file design applications – Convention priority claim – whether error or omission – application for extension of time refused.
Background

On 24 March 2010, Joseph Joseph Limited (‘the Applicant’) filed design applications 11120/2010 and 11121/2011 (“the design applications”) for, respectively, Chopping Boards and Bowls. The Applicant is also the owner of Community Design Registration 886965 filed on 20 February 2008 for Bowls and Chopping Boards.
The Applicant concurrently filed an application for a twenty (20) month extension of time (“the EOT”) on 24 March 2010 under section 137(2)(a) of the Designs Act 2003 (‘the Act’). The purpose of the EOT is to allow the registration of the above design applications in Australia on the basis of a priority date derived from an overseas application for the protection of a design. If granted, the time period would be extended from the 20 August 2008 until 20 April 2010. Attached to the application for the EOT is the statutory declaration of Sara Delpopolo of Axis Legal Pty Ltd sworn on 24 March 2010. That declaration sets out the reasons for applying for this extension.
To claim priority from the overseas application, section 27(1)(b) of the Act sets out the requirements:
(1)The priority date of a design disclosed in a design application that meets the minimum filing requirements is:
(a)the filing date of the design application; or
(b)if, before the design application was filed, an application for protection in respect of the design had been made in a convention country in accordance with the regulations—the date prescribed by the regulations; or
(c)if the regulations provide for a different date as the priority date—the date prescribed by the regulations.
In addition, regulation 3.06 of the Design Regulations 2004 relevantly provides:
(1)In this regulation:
basic application, in respect of a design, means an application for protection of the design, being an application that is made in a convention country in accordance with these Regulations.
(2)For paragraph 27 (1) (b) of the Act, if the design application is filed, within 6 months after the date on which the basic application was made, by:
(a)the applicant in the basic application; or
(b)the applicant’s assignee; or
(c)the legal personal representative of the applicant or of the applicant’s assignee;
the prescribed date is the day when the basic application was made.
...
(4)For paragraph 27 (1) (b) of the Act, if subregulation (2) does not apply to the design, the prescribed date is the filing date of the design application.
The Applicant did not file the design applications within the sixth month period allowed in which to claim Convention…

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.

Continue reading Kmart Australia Limited

Details

AGLC: Kmart Australia Limited [2011] ADO 2
Case: [2011] ADO 2
Decision Date: 21 April 2011

CaseChat Overview and Summary

Joseph Joseph Limited filed design applications for Chopping Boards and Bowls in March 2010 and concurrently sought an extension of time under section 137(2)(a) of the Designs Act 2003 to claim Convention priority. The extension was opposed by Kmart Australia Limited, which submitted evidence in support of its opposition. The delegate found that there was no error or omission by the applicant or its agent that resulted in the failure to file the design applications within the requisite six-month period. The delegate refused the extension application, and the design applications will proceed to registration with the original lodgment date. The opponent was awarded its costs.

The main legal issue before the delegate was whether the applicant's failure to file the design applications within the requisite six-month period constituted an error or omission by the applicant or its agent. The delegate found that the applicant had misapprehended the extent of the protection arising from its Community Design registration and had failed to file a design application in Australia within the requisite time period. However, the delegate was not satisfied that there had been any error or omission by the applicant's agent that resulted in the failure to file the design applications within the requisite time period. The applicant's misapprehension or ignorance of Designs legislation did not constitute an error by itself, and the failure to file a design application must be "by reason of" the error or omission. In the current circumstances, the delegate could not be satisfied that there was an "error or omission" that resulted in the applicant's failure to file its design applications at the correct time.

Orders