Kmate Pty Ltd v David Mills - [2017] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Request for examination of design registration numbers 340103 and 340245 (design numbers 201115323 and 201115193) by Kmate Pty Ltd both in the name of David Mills

Delegate:

Adrian Richards

Representation:

Requestor: M+K Lawyers

Owner: Barker Blenkinship and Associates

Decision:

2017 ADO 1

Designs Act 2003 (Cth) – hearing pursuant to section 67(3) – examination requested under section 63(1) by person other than the owner – First Design not distinctive over prior art base – design revoked – Second Design distinctive over prior art base – examination certificate to issue

Background

In 2011, David Mills (‘the Owner’) filed two applications under the Designs Act 2003 (Cth) (‘the Act’). Each application disclosed a single design (together, ‘the Designs’). Having passed the minimum filing requirements and formalities checks, the Designs were entered on the Register of Designs with the following particulars:

Design number 201115323 (‘the First Design’)

Registration number: 340103

Filing (and priority) date: 28 October 2011

Registration date: 5 January 2012

Product Name: Two stroke combustion chamber and porting

Statement of Newness and Distinctiveness: Newness and distinctiveness resides in the shape of the combustion chamber and ports.

Representations:

Design number 201115193 (‘the Second Design’)

Registration number: 340245

Filing (and priority) date: 15 November 2011

Registration date: 9 January 2012

Product Name: Two stroke motor block

Statement of Newness and Distinctiveness: Novelty resides in the shape and configuration of the charging ports as depicted.

Representations:

On 2 February 2012 the Owner requested the Designs be examined. No adverse findings were raised, and certificates of examination issued in March and April of 2012.
A second request for examination of the Designs was filed on 1 May 2012 by Kmate Pty Ltd (‘the Requestor’). The request was accompanied with material purporting to be relevant to the newness and distinctiveness of the Designs, comprising two declarations by Scott Gladstone (with exhibits), one executed in relation to each.
The Owner was given a copy of the Mr Gladstone’s declarations, and invited to pay the owner’s portion of the examination fees in accordance with reg 11.05 of the Designs Regulations 2004 (Cth) (‘the Regulations’). Those fees were paid on 19 July 2012.
Examination of the Designs then commenced for a second time, resulting in a pair of notices titled ‘Notification of Intention to Certify’ dated 3 September 2012. The notices set out the examiner’s findings under s 19 of the Act for the Designs, indicating that the examiner was satisfied that no grounds for revocation had been made out, and that certificates of examination would issue unless the Requestor requested to be heard within a month.
In response to these notices from the examiner, on 2 October 2012 the Requestor filed a further submission enclosing a second pair of declarations by Mr Gladstone (with exhibits). Annexed to these new declarations were two physical specimens of engine cylinders.
The Requestor’s further submissions appear to have been persuasive. On 30 November 2012 an examiner raised adverse…

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 Kmate Pty Ltd v David Mills

Details

AGLC: Kmate Pty Ltd v David Mills [2017] ADO 1
Case: [2017] ADO 1
Decision Date: 31 January 2017

CaseChat Overview and Summary

The case of Kmate Pty Ltd v David Mills involved a request for examination of two design registrations by Kmate Pty Ltd, both in the name of David Mills. The designs related to two stroke combustion chambers and motor blocks. The central legal issue was whether the designs were distinctive over prior art, which would determine their eligibility for registration. The hearing officer, Adrian Richards, considered the submissions and evidence from both parties, including declarations from Scott Gladstone of Kmate Pty Ltd, David Mills, and Bill Nabhan. The officer examined the state of development of the prior art base, the standard of the informed user, and the freedom of the creator of the design to innovate. Richards found that the First Design was not distinctive over prior art, as the similarities outweighed the differences. However, the Second Design was found to be distinctive, as the differences in the internal features, while slight, would alter engine performance, and there were also several differences in external features. Consequently, the First Design was revoked, and a certificate of examination was to issue for the Second Design. Both parties were ordered to bear their own costs.

Orders