Lyons Airconditioning Services (WA) Pty Ltd v Kedron Caravans Pty Ltd
[2022] ADO 1
•1 February 2022
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for revocation by Lyons Airconditioning Services (WA) Pty Ltd of Australian design number 201912935 in the name of Kedron Caravans Pty Ltd
Delegate: | Nicholas Barbey |
Representation: | Requestor: Lyons Airconditioning Services (WA) Pty Ltd Owner: Kedron Caravans Pty Ltd |
Decision: | 2022 ADO 1 Request for revocation of a design under section 51 of the Designs Act 2003 (Cth) – insufficient evidence that a person other than the registered owner is an entitled person in relation to Australian design number 201912935 – registration of design not revoked. |
Background
This decision concerns a request for revocation of Australian design number 201912935 (‘Design’) on grounds relating to entitled persons under s 51 of the Designs Act 2003 (Cth) (‘Act’).
The Design was filed on 20 May 2019 and registered on 30 June 2019 (‘Application’). Reproduced below are its relevant details:
Design number: 201912935
Owner:Kedron Caravans Pty Ltd (‘Owner’)
Designer:David Gall
Product name: Caravan
Representations:[1]
[1] The full set of representations of the Design are reproduced in Annexure A to this decision.
Statement of Newness and Distinctiveness (‘SoND’):
The newness of this product is the ability to fit / retrofit into a standard wind-up hatch 14-inch square recess of a caravan or RV to now pressurise the internal cabin with an integrated high volume fan to draw air through a flow tested filter for a positive pressure to resist dust entry through gas vents, and the distinctiveness is a complete new unique design that allows the owner to internally access the replacement filter via a drop swing door to change out or wash their air filter when required.
On 11 July 2019, Lyons Airconditioning Services (WA) Pty Ltd (‘Requestor’) requested revocation of the registration of the Design based on grounds relating to entitled persons (‘Request’). The Requestor claimed that it was an entitled person in relation to the Design. The Request stated:
The design application 201912935 submitted by Kedron Caravans, is false as this is a direct copy of what we have been selling to the market for approximately the last 2 years. We have evidence of Kedron approaching us earlier in the year looking for information regarding our CP700 Carafan Sahara caravan pressuriser. We also have evidence of a leint [sic] we sold to who took it to Kedron for installation. They would have seen the unit then and copied it. They submitted an application to IP Australia under false information and copy infringement. Lyons has since sent Kedron a legal warning to “Cease and Desist Copy Infringement” for the Lyons Carafan Sahara pressuriser.
Lyons has design documents, marketing material, customer invoices, images and manufacturing documentation to prove the unit was origianlly [sic] designed, invented and distributed [to] the market well before Kedron was aware of the unit. We can also show evidence that Kedron approached us for information and falsely misled IP Australia and the market that the design was unique to them. We want all IP entitlements to be revoked and we will pursue legal avenues should they not abide by our demand to “Cease and Desist Copy Infringement” letter within 7 days of the date sent (09/07/2019).
The Designs Office informed the Owner of the Request and sought clarification as to whether it would be contested.[2] In response, the Owner advised the Designs Office that it would be contesting the Request.
[2] The Owner was also notified that examination of the Design had been requested. The correspondence stated that the examination of the Design would ‘run concurrently and independently of the revocation matter’.
The parties were subsequently invited to file evidence and/or written submissions. Evidence in Support (‘EIS’) was filed by the Requestor followed by Evidence in Answer (‘EIA’) being filed by the Owner. In turn, the Requestor filed Evidence in Reply (‘EIR’). An oral hearing was not requested and neither party filed written submissions. The matter has been allocated to me for determination as a delegate of the Registrar of Designs. In doing so I take account of the above detailed material. This material comprises the written record.
Legal framework
Section 51 of the Act relevantly provides:
Revocation of registration on grounds relating to entitled persons
(1) A person may apply to the Registrar for revocation under section 52 of the registration of a design.
Section 52 of the Act relevantly provides:
Procedures in relation to application
(1) This section applies if a person makes an application under section 51 for revocation of the registration of a design.
(2) If the Registrar is satisfied that:
(a) a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or
(b) each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time;
the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.
Section 5 of the Act contains the following definition of ‘entitled person’:
“entitled person”, in relation to a design, means a person entitled under section 13 to be entered in the Register as the registered owner of the design.
Section 13 of the Act provides:
Who is entitled to be registered as the registered owner of a design
(1) A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the registered owner of a design that has not yet been registered:
(a) the person who created the design (the designer);
(b) if the designer created the design in the course of employment, or under a contract, with another person--the other person, unless the designer and the other person have agreed to the contrary;
(c) a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law;
(d) a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person;
(e) the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d).
(2) Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of a design that has not yet been registered if:
(a) the person has assigned all of the person’s rights in the design to another person; or
(b) the person’s rights in the design have devolved on another person by operation of law.
(3) To avoid doubt:
(a) more than one person may be entitled to be entered on the Register as the registered owner of a design; and
(b) unless the contrary intention appears, a reference to the registered owner of a registered design in this Act is a reference to each of the registered owners of the design.
(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered.
Evidence
The following declarations were filed as evidence in this matter:
| EIS |
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| EIA |
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| EIR |
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Blanket confidentiality claim
The EIS is comprised of six declarations, each of which contains a blanket statement that their contents are 'strictly confidential’. Such statements are clearly incompatible with parts of their declarations which discuss publicly available records from the Australian Securities & Investments Commission as well as publicly accessible information on websites.
While the Requestor’s interests in preserving its confidential information is acknowledged, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may inevitably require discussion. This is particularly relevant when the Requestor has made no effort to identify the information alleged to be confidential. Accordingly, where such discussion is unavoidable and, providing it is possible, broad non-specific statements will be used to minimise the potential risk of divulging any commercially sensitive information.
EIS
The Ballard Declaration outlines the history of the Requestor’s caravan air pressurisation unit design (‘Carafan’)[3] which commenced development in 2015. Mr Ballard declares that Bruce Worsley initially approached the Requestor to build a custom air pressurisation unit for his caravan. The Requestor did not fulfil Mr Worsley’s request because it was not commercially viable to develop a single custom-built product.
[3] Representations of the Carafan are reproduced in Annexure B to this decision.
Nevertheless, Mr Ballard explains that two of the Requestor’s employees, Gavin Lyons and Arron Smithson, retained a personal interest in this design project. In 2016, the pair commenced developing prototypes of a caravan air pressurisation unit designed to ‘fit into a standard “maxi-fan” vent hatch’.[4] Mr Ballard states that a ‘Maxxfan’ unit, obtained from an existing supplier, was eventually ‘used for the dimensional information for the Carafan prototype’[5] and the prototype was finalised in early 2017. The Carafan prototype was exhibited at various shows throughout 2017 and the Requestor received its first purchase order in October 2017. Mr Ballard states that the Carafan prototype was further refined in early 2018 and subsequently supplied to various caravan distributors in the same year.
[4] Ballard Declaration, [12].
[5] Ibid [13].
Mr Ballard declares that Mr Worsley purchased a Carafan from the Requestor in January 2019 and had it shipped directly to the Owner for installation. On this basis, Mr Ballard asserts that the Owner had actual knowledge of, as well as physical access to, the Carafan prior to filing the Application. In Mr Ballard’s view, the Requestor should be recognised as an entitled person to the Design.
The Lardis Declaration details correspondence exchanged between the Requestor and the Owner. Relevantly, the Requestor sent a cease and desist letter to the Owner in July 2019 alleging, among other things, the Design has ‘unlawfully copied’ the Carafan. Through its legal representative, the Owner replied seeking further and better particulars of the various allegations. The Lardis Declaration does not disclose whether further communication occurred.
The Lardis Declaration also discusses the development and commercialisation of the Carafan. Mr Lardis’ version of events broadly mirrors those disclosed in the Ballard Declaration. The Lardis Declaration states that the Requestor received an online query from the Owner in October 2018. The query sought details regarding the Carafan and mentioned that the Owner was contemplating offering the product to its clients. In Mr Lardis’ view, it is ‘perplexing’ why the Owner would be seeking to purchase a Carafan given it was supposedly developing its own air pressurisation unit around this time period.
The Lardis Declaration also contains what are essentially submissions regarding the purported similarities between the Carafan and the Design. In short, it is alleged that there are several similarities which are suspicious given the history between the parties. Mr Lardis points out that both designs contain a rectangular angled top lid, 24 cut outs along the edge of the main chassis and a side view which gives an appearance of four component parts.[6] The remainder of the Lardis Declaration discusses the Requestor’s promotion, sales, revenue and intended future use of the Carafan.
[6] Lardis Declaration, [34].
The Lyons Declaration recounts the development of the Carafan and does not deviate from the timeline provided by Mr Lardis and Mr Ballard. Mr Lyons declares that the Owner would have been aware of and had direct access to the Carafan prior to the lodgement of the Application. In Mr Lyons’ view, there ‘are substantial similarities between the design the subject of the Opposed Application and the Carafan’[7] and it appears that the Carafan ‘influenced’ some visual features of the Design.
[7] Lyons Declaration, [37].
The Hayley, Rogers and Smithson Declarations essentially reiterate the statements made in the Ballard and Lardis Declarations regarding the design, manufacture and commercialisation of the Carafan including the assertion that the Requestor is an entitled person to the Design.
EIA
The McCormick Declaration confirms that the parties are known to each other and contains submissions addressing what Mr McCormick perceives to be the new and distinctive features of the Design when compared to the prior art base.[8] Specifically, Mr McCormick draws attention to the SoND included in the Application as well as the Design’s ‘drop swing door’ which he characterises as being its unique ‘primary visual feature’.[9] Mr McCormick also claims that at ‘no time during the creation and registration of the [Owner’s] product was the [Requestor] identified as the "entitled person" to the ownership of the Design’.[10] The remainder of the McCormick Declaration discusses the potential subsistence of copyright in the Carafan as well as asserting that the Carafan has been ‘applied industrially’.[11]
EIR
[8] See Act s 15(2).
[9] McCormick Declaration, [12]–[13].
[10] Ibid [21].
[11] See generally Act s 18 and Copyright Act 1968 (Cth) s 77.
The Rowland Declaration responds to claims made within the McCormick Declaration. Ms Rowland states that the McCormick Declaration has misconstrued the nature of the current matter by introducing irrelevant submissions particularly with respect to issues concerning copyright. Ms Rowland emphasises that no evidence has been filed by the Owner in relation to its conception and development of the Design. On this basis, Ms Rowland opines that this absence of documentary evidence lends credence to the possibility that the Owner did not conceive of the Design. Finally, Ms Rowland rejects the proposition that the Design is not substantially similar to the Carafan and reference is made to instances of actual confusion between the two designs experienced by the Requestor.
Discussion
From the outset, the evidence filed reveals the existence of various issues in dispute between the parties. This includes allegations concerning potential copyright infringement and extinguishment together with claims that the Design is not a registrable design.[12] In the interests of clarity, the only issue for determination in this matter is whether the Owner was the sole entitled person to the Design. Questions concerning the subsistence of copyright in the Carafan and whether the design is distinctive over the prior art base are not relevant to the issue at hand. The Requestor is not required to establish that it was an entitled person to the exclusion of the Owner nor is it required to establish that the Design is a registrable design for the Request to be successful. Instead, the Requestor only needs to establish on the balance of probabilities that someone other than the Owner was also an entitled person, or the Owner was not an entitled person, at the time the Design was first registered.
[12] Act s 15(1) provides that 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’.
Section 13 of the Act sets out an exhaustive list of who is entitled to be registered as the owner of a design that has not yet been registered. The entitled person is the individual, body corporate or body politic who is entitled to be entered on the Register of Designs as the registered owner of a design. The default position is that the designer, being the person who conceived of the design and reduced it to some physical form, is the entitled person.[13] However, this position will change if certain conditions, as laid out within the provision, are satisfied. It has been established that a designer is the ‘person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form’.[14]
[13] Act s 13(1)(a).
[14] LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941, [26] (Gordon J) citing with approval Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75, 80 (Smithers J).
As the concept of entitlement relates to a design ‘that has not yet been registered’,[15] logic dictates that evidence of entitlement should at least be contemporaneous with the registration date of the Design. This is because post-dated evidence is unlikely to be of assistance in determining who created the visual features of the Design when it was first registered. Likewise, evidence establishing entitlement should relate to the Design and not, for example, to a design which shares similarity with it.[16] That is, a request under
s 51 of the Act should be confined to determining issues of entitlement to the design at hand and not matters which are more appropriately dealt with via third party examination.[17][15] Act s 13(1).
[16] Australian Fitness Supplies Pty Ltd v Rasheed Rane [2013] ADO 6, [36].
[17] See Act s 63(1) which provides that the ‘Registrar must examine a design that has at any time been a registered design if any person requests, or a court orders, that the Registrar examine the design’.
Here, David Gall has been particularised in the Application as being the designer of the Design. The Owner’s entitlement therefore rests on Mr Gall being found to be the sole designer. The McCormick Declaration is devoid of any evidence or information regarding the Design’s development. Nor does it clarify Mr Gall’s relationship to the Owner.[18] However, this lack of evidence is not fatal to the Owner’s entitlement and, by itself, does not merit the revocation of registration.[19] As mentioned at [23] of the decision, it is the Requestor who bears the burden of establishing another person’s entitlement to the Design or the Owner’s lack thereof.
[18] For example, it may be the case that Mr Gall is an employee of the Owner and the Owner’s entitlement is derived by operation of s 13(1)(b) of the Act. However, no firm conclusions may be drawn because the EIA is silent on this issue.
[19] Act s 118(1) provides that ‘the Register is prima facie evidence of any particulars entered in it’.
It is common ground that the Carafan existed prior to the Owner filing the Application. The EIS contains dated evidence which establishes that the Carafan was designed by the Requestor’s employees and distributed to market by the Requestor before May 2019. The EIA does not dispute this. Indeed, it acknowledges the Carafan’s prior existence through Mr McCormick’s statement that the prior art base specifically includes the Carafan.[20] The Requestor’s entitlement therefore turns on whether the Carafan’s visual appearance provides a basis to attribute the Requestor’s employees as being the designers of the Design. For the reasons that follow, I am not satisfied that the evidence provides a cogent basis for this conclusion to be drawn.
[20] McCormick Declaration, [18].
Two main lines of argument were pursued by the Requestor to establish its entitlement to the Design. First, it contends that the Owner had actual knowledge of and direct access to the Carafan prior to filing the Application. As I understand the argument, the implication is the Owner had the opportunity to effectively reverse engineer the Carafan and copy its visual appearance. Second, the Requestor asserts that the Design is, at the very least, substantially similar to the Carafan. Taken together, the Requestor asserts that the Owner’s prior knowledge of the Carafan and the visual similarities between the respective designs means that it is an entitled person within the meaning of the Act. It is convenient to consider each argument in turn.
As regards to the Owner’s knowledge of the Carafan, I am satisfied that the Owner had physical access to the Carafan prior to filing the Application. The EIS contains documents which establish that the Owner contacted the Requestor about the Carafan and also fitted a Carafan to Mr Worsley’s caravan in early 2019. The EIA does not seek to contradict either event. However, the occurrence of either event does little to advance the Requestor’s position. It is common ground between the parties that the Carafan formed part of the prior art base. As such, the Carafan was available to the public without any restrictions as to confidentiality. It follows that the Owner would have been able to freely access and procure the Carafan irrespective of contacting the Requestor or Mr Worsley’s installation request. Without more, this line of argument is therefore circumstantial at best.
Turning to the alleged similarities shared by the Carafan and the Design, the Request states that the Design is a ‘direct copy’ of the Carafan. This is plainly incorrect. A cursory inspection of each design reveals differences in their respective visual features. For example, the pattern that appears on the fan grill cover in each design substantially differs. As such, the Design is not a ‘direct copy’ of the Carafan. Sensibly, the Lardis Declaration did not persist with the assertion that the designs are identical. Rather, Mr Lardis contended that there are ‘substantial similarities’ between the Design and the Carafan.[21]
[21] Lardis Declaration, [34].
In my assessment, two main problems arise from Mr Lardis’ contention. The evidence filed simply does not support the proposition that the Requestor’s employees created the Design as it appears in the registered representations. In addition to the pattern variation in the fan grill cover, there are further significant differences in the visual appearance of each design. This includes different shaped cut outs along the edges of the main chassis and different shaped fan boxes including the presence of an internal drop swing door in the Design and the absence of same in the Carafan. Additionally, the external lid in each design differs in terms of the degree of angularity and the absence of an overhanging edge in the Carafan. Considered in their entirety, I am satisfied that these differences extend beyond simply being an alleged refinement of the Carafan as submitted by Ms Rowland.[22]
[22] Rowland Declaration, [21]. However, this conclusion should not be construed as making any determination regarding the distinctiveness of the design.
The Requestor’s difficulty in establishing entitlement is further compounded by the fact that it essentially requires me to mosaic various computer-aided design drawings and photographs together in order to form a unified representation of the Carafan. This is reflected in the comparison undertaken in the Lardis Declaration wherein the Design is compared with images of the Carafan in different mediums. In some instances, the images purporting to show the same part of the Carafan are not even internally consistent and display different visual features.[23] As such, whilst some images of the Carafan share common visual features with the Design, I cannot infer from the evidence that these visual features are uniform across the different representations of the Carafan supplied by the Requestor.
[23] Lardis Declaration, [34]. For example, the images appearing in the item labelled ‘top view’ show two different fan grill covers.
For completeness, even if I were to accept that the Carafan ‘influenced’ the visual appearance of the Design, it does not follow that the Requestor’s employees must be the creators of the Design. Put simply, Mr Gall is free to consider the prior art base and incorporate different visual features from existing designs so long as his resultant creation is new and distinctive when compared to each individual piece of prior art and not the prior art base as a whole.[24] The fact that the Carafan and the Design share a degree of visual similarity is not sufficient to establish entitlement. As discussed at [25] of this decision, evidence of entitlement should be in relation to the Design whereas issues directed towards the distinctiveness of the Design, which appears to be the case in this matter, should be pursued via third party examination.[25]
[24] LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941, [12] (Gordon J).
[25] I note the Requestor requested examination of the Design in December 2019 and a certificate of examination issued on 13 March 2020.
In light of the above, the Requestor has failed to satisfy me that any of its employees were a designer, or that they were otherwise entitled to proprietorship, of the Design.
Decision
Section 52 of the Act relevantly provides:
Procedures in relation to application
(1) This section applies if a person makes an application under section 51 for revocation of the registration of a design.
(2) If the Registrar is satisfied that:
(a) a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or
(b) each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time;
the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.
(3) If the Registrar makes a declaration under subsection (2), the Registrar must:
(a) notify the relevant parties that the registration of the design is revoked; and
(b) make an entry in the Register under section 115.
(4) The Registrar must also publish a notice, in the form prescribed by the regulations, stating that the registration of the design has been revoked and that the design is taken never to have been registered.
(5) The Registrar must not revoke the registration of a design under this section unless the Registrar has given each original registered owner a reasonable opportunity to be heard.
Based on the evidence before me, I am not satisfied that the Requestor or any persons other than the Owner were an entitled person at the time of registration of the Design. Accordingly, the Request is unsuccessful and I decline to revoke registration of Australian design number 201912935.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Designs
1 February 2022
Annexure A
| Design 201912935 |
Annexure B
| Exhibit EL-4 to Lardis Declaration | Exhibit EL-16 to Lardis Declaration |
| Exhibit EL-21 to Lardis Declaration | Exhibit EL-24 to Lardis Declaration |
| Exhibit EL-24 to Lardis Declaration | Exhibit EL-35 to Lardis Declaration |
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