M v Paradise Queen Pty Ltd

[1990] ADO 1

DESIGNS ACT 1906

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Re:      Design No. 101322 in the name of M.V. PARADISE QUEEN PTY
         LTD and application for extension of the period of
         registration.

Background
         Design No. 101322 was lodged on 2 March 1987 and entered in the register on 22 September 1988.  On 18 November 1988 the Designs Office received a letter from F.P. and Y.J. Wilson informing the Registrar that their registered design No. 95693 is the same design as design No. 101322;  this letter was treated as a notice pursuant to sub‑section 27A(4).  On 13 June 1989 M.V. Paradise Queen Pty Ltd applied under sub‑section 27A(2) for extension of term of the period of registration.  On 27 June 1989 an application was lodged under section 38 by Dadinford Pty Ltd for registration of its title to design No. 101322.  A letter dated 5 July 1989 from the Designs Office to the registered owner of the design indicated that, as a consequence of the abovementioned S.27A(4) notice, the Registrar was not prepared to extend the period of registration; and a letter dated 17 October 1989 from the Designs Office to Mr B. Brown, representing the registered owner, indicated inter alia that a new request was necessary to register Dadinford's title.
         On 24 October 1989 the Designs Office received a letter from V. Pennisi and Associates, solicitors, acting on behalf of

Barrie Brown and Lyn Brown.  Dadinford Pty Ltd is trustee for the Brown Family Trust, the latter being represented by Barrie and Lyn Brown.  The letter indicates that the Browns require to be heard.  A hearing was held in Brisbane on 6 September 1990 and the Browns were represented by Mr Vince Pennisi.

Prior registration
         Design No. 101322 is entitled "shoulder protector";  the representations are shown below

The statement of monopoly is: "monopoly is claimed in the shape or configuration of a shoulder protector as illustrated."  Correspondence from the registered owner indicates that the design is applied to articles to be attached to car seat belts or bag straps.
         Design No. 95693 is entitled "seat belt cushion";  copies of the three photographic representations are shown below.

The statement of monopoly is: "monopoly resides in the features of shape, configuration and pattern of a seat belt cushion illustrated in the accompanying representation".
         Design No. 95693 was lodged on 12 February 1986 and entered in the register on 26 March 1987.  According to sub‑section 27A(1), the date of registration of a design is deemed to be the date of lodgement, therefore design 95693 has an earlier registration date than design 101322.  However, a design is not published until the date of entry in the register, and therefore in this case design 95693 was not published before registration of 101322.
         Sub‑section 27A(4) reads as follows:

"A person may, at any time before the expiration of the period of 11 months commencing on the date on which the registration of a design was made in the register, lodge at the Designs Office a notice, in accordance with a prescribed form, setting out any matter ‑

(a)that has been published in a document in Australia before the priority date in respect of the application for registration of the design; and

(b)that the person considers to be relevant to the question whether the design was not, at the priority date referred to in paragraph (a), a design that was new or original."

The priority dates of the two designs referred to in this case are the dates of lodgement; therefore, taking into consideration the publication date of design 95693 referred to above, it can be seen that design 95693 was not published before the priority date of design 101322.  However, even though design 95693 does not come within the scope of sub‑section 27A(4), I am required to consider it under sub‑section 27A(9) which reads as follows:

"The Registrar may, having regard to any matter (including a matter published in a document a copy of which has been lodged with a notice under sub‑section (4)) that has come to his notice in connection with a design referred to in sub‑section (4), refuse an application under sub‑section (2) for extension of the period of registration of a design on the ground that the design was not, at the priority date in respect of the application for registration of the design, a design that was new or original."

To determine whether a design is new or original I refer to sub‑section 17(1) which reads as follows:

"Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design ‑

(a)differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article; or

(b)is an obvious adaptation of a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any other article."

Sub‑section 17(1) specifically refers to a prior design being registered before the priority date of the design being considered; therefore I think it is appropriate for me to consider design 96593 in the matter of extension of the period of registration of design 101322.
         Both parties in this case submitted samples of articles to which their designs had been applied.  Certainly, a clearer impression of a design can be gained when one is able to directly view an article with the applied design, but I think that such an analysis is not appropriate in the present case.  In this case I am dealing with a matter of prior registration, not prior publication, and the novelty of design 101322 should be judged on the representations of design 96593 as registered, not on an article which incorporates the design.
         Mr Pennisi submitted that there are significant differences between the two designs, namely that 101322 is more rounded in cross‑sectional shape, has a less noticeable joint and has Velcro attachment strips on different surfaces on opposed side edges of the lambswool lining.  VELCRO is a Registered Trade Mark.  He was comparing two three‑dimensional articles per se, but as indicated above I think that such an analysis is not appropriate.  It is only appropriate to consider the disclosure in design 96593 as registered, and upon such a consideration I conclude that it cannot be determined from the representations whether there are any Velcro layers on the edge strips, notwithstanding which side of each strip the layers might be on.  It could be construed from the representations that the edge strips may be glued together for example.  In contrast, the drawn representation of design 101322 clearly shows, on opposite surfaces of the edges of the shoulder protector, the two components of Velcro attaching layers.  I think that design No. 101322 is novel in the light of registered design No. 96593.   Thus, I allow the application to extend the term of registration and I direct that it be so extended in accordance with sub‑section 27A(8).

Assignment
         The application under Section 38 by Dadinford reads as follows:

"We, DADINFORD PTY. LTD. as Trustee for the Brown Family Trust of Bellspocket and Lawnton Pocket Roads, Wyllie, Queensland, hereby make application for our name to be entered in the Register of Designs as proprietor of Registered Design No. 101322.

The grounds upon which this application is made are as follows:

The abovenumbered design registration has been assigned by Deed of Assignment dated 17 November, 1988 from M.V. Paradise Queen Pty. Ltd. to Dadinford Pty.Ltd.

We furnish with this application the following documents:

Original Deed of Assignment and attested copy thereof."

The Designs Office indicated that a new request was necessary to register Dadinford's title "because under Section 34 of the Designs Act trusts cannot be received by the Registrar or entered in the Register." Mr Pennisi submitted that the application is not seeking to enter the name of a trust and that it is not the intention of Section 34 that a trustee cannot be the owner of a registered design.
I agree with Mr Pennisi's submissions in this matter. Section 34 relates to a simple notice of trust and does not exclude the registration of any interest in the proprietorship of the design. See Stewart v Casey 9 RPC 9. In this case the Deed of Assignment clearly shows that Dadinford is the new proprietor of the design. Thus, I direct that Dadinford Pty Ltd be entered in the register in accordance with Section 38.

J.I. WELSH