Manuel Canestrini and Ilan El
[2020] ADO 2
•25 June 2020
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for revocation by Manuel Canestrini of Australian design numbers 201911962 and 201911963, both in the name of Ilan El.
DELEGATE: Nicholas Barbey REPRESENTATION: Requestor: Manuel Canestrini
Owner: Ilan El
DECISION: 2020 ADO 2
Request for revocation of two designs under section 51 of the Designs Act 2003 (Cth) – requestor found to be the sole designer of Australian design number 201911963 and entitled to be recorded as the registered owner - design revoked and s 52 declaration made specifying the requestor as the entitled person – insufficient evidence that a person other than the registered owner is an entitled person in relation to Australian design number 201911962 – design not revoked
and no s 52 declaration issued
Background
This decision concerns a request for revocation of Australian design numbers 201911962 and 201911963 (together ‘Designs’) on grounds relating to entitled persons under s 51 of the Designs Act 2003 (Cth) (‘Act’).
The Designs were filed on 5 April 2019 and registered on 3 July 2019, the relevant details of which are set out below:
Design number: 201911963 (‘963 Design’) Owner: Ilan El (‘Owner’)
Designer: Ilan El
Product name: The Cannon Vase is a decorative flower vase made of mouth blown glass, glass weight and a stand.
Representations:
Design number: 201911962 (‘962 Design’) Owner: Ilan El
Designer: Ilan El
Product name: The Cannon Vase is a decorative flower vase made of mouth blown glass, glass weight and a stand.
Representation:
On 23 July 2019, Manuel Canestrini (‘Requestor’) requested revocation of the Designs based on grounds relating to entitled persons (‘Request’). The Requestor asserted they were an entitled person in relation to the Designs. The Request relevantly stated:
There are numerous design versions for the Cannon Vase dating back to the winter of 2017. These original designs were developed under the 'formacy' brand by myself with feedback being received by the other two members Louise Joachim and Ilan El.
The company was originally founded by Louise Joachim, Ilan El and myself on the 9th of March 2017. On the 9th of February 2018 Ilan El sent his resignation via email to myself. Included in the email was a statement from Ilan as follows: "As for the designs that we've developed and the products produced to date - These are all yours."
The 'formacy' Brand in this form was dissolved and transferred to me as sole owner during the period of March To June 2018. As these designs were all done under the 'formacy' brand the rightful owner of the designs is only me.
On 21 August 2019, IP Australia notified the Owner of the Request and set a deadline of 21 September 2019 for the Owner to indicate whether they would contest the Request. The Owner responded advising they would not be contesting the Request nor would they be participating in the matter. Correspondence confirming same was subsequently issued to the Owner on 21 October 2019.
On 21 October 2019, directions were made for the Requestor’s filing of evidence. The Requestor duly filed evidence in support, namely, the declaration of Manuel Canestrini dated 2 December 2019 with Attachments A to H (‘Canestrini Declaration’). An oral hearing was not requested by the Requestor.
Accordingly, I was assigned to determine this matter in my capacity as a delegate of the Registrar of Designs. This matter has been determined based on the material comprised of the written record, described above.
Legislative framework
Section 51 of the Act relevantly provides:
51 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:
52 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.
The term ‘entitled person’ is defined in s 5 of the Act in the following manner:
‘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.
10.Section 13 of the Act provides:
13 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
11.According to the Canestrini Declaration, Louise Joachim, the Owner and the Requestor were business partners in 2017 who operated under the name ‘Formacy’.1 A Record of Registration issued by Australian Securities & Investment Commission (‘ASIC’) attached to the Canestrini
1 I note the statement of the grounds on which the Request was made had referenced the existence of a company. There appears to have been a misconception of the ‘Formacy’ business structure given the Canestrini Declaration does not mention any company nor has any evidence been filed regarding same.
Declaration shows that the partnership registered ‘Formacy’ as a business name on 9 March 2017.
12.The Requestor explained that specific responsibilities were assigned to each partner in the ‘Formacy’ business and the responsibility for product design was assigned to the Requestor. As part of the design process, the Requestor acknowledged that ‘peer feedback’ was sought from Ms Joachim and the Owner. According to the Requestor, human cannonball acts performed at the circus provided him with inspiration for the concept of the Designs. In his role as product designer in the ‘Formacy’ business, the Requestor states that he is in possession of ‘all the documentation to support the numerous design versions for the “Cannon Vase” dating back to the winter of 2017’. To this end, Attachments E.1 to E.11 to the Canestrini Declaration contain various iterations of the Designs which will be discussed further below.
13.Attachments F.1 to F.6 to the Canestrini Declaration contain correspondence in the form of emails circulated between the Requestor, the Owner and, on occasions, Ms Joachim. The dates of the correspondence range from 10 July 2017 to 6 December 2017. The content of the correspondence can be broadly summarised as the Requestor seeking ‘peer feedback’ from the Owner and Ms Joachim regarding various iterations of the Designs.
14.The Requestor points out that the Owner resigned from the ‘Formacy’ business on 9 February 2018. Attachment B.1 to the Canestrini Declaration contains an email dated 9 February 2018 from the Owner to the Requestor (‘Resignation Email’). Relevantly, this Resignation Email stated (emphasis added):
I have decided to leave Formacy and focus on my own business that needs my full attention.
I will assist you with production and handover until the end Feb. As of 1st of March I will no longer be associated with Formacy and will remove all my details from this business.
As for the designs that we've developed and the products produced to date - These are all yours.
On this basis, the Requestor believes that the Owner assigned to them any claim they may have had in relation to the Designs.
15.The ‘Formacy’ partnership was dissolved after the Owner’s resignation and the Requestor refers to an ASIC database extract which shows that the business name ‘Formacy’ was
cancelled on 24 March 2018.2 The Requestor states that ‘Formacy’ changed to a ‘sole trader business’ after the dissolution of the partnership. Attachment D to the Canestrini Declaration contains an ASIC Record of Registration dated 5 June 2018 for the business name ‘Formacy’ in the name of the Requestor only.
16.The Requestor states that the ‘Cannon Vase’ was displayed under their ‘Formacy’ brand name approximately one year prior to the filing date of the Designs. Specifically, the ‘Cannon Vase’ was publicly exhibited during the ‘Melbourne Design Week’ as part of the ‘Decoding Design’ exhibition held between 15 to 18 March 2018. Attachments G.1 and G.2 to the Canestrini Declaration contain dated photographs of the 963 Design on display at this exhibition. According to the Requestor, the Owner also presented at the ‘Decoding Design’ exhibition and never objected to the ‘Cannon Vase’ being exhibited under the Requestor’s ‘Formacy’ brand. Attachments H.8 and H.10 to the Canestrini Declaration contain, respectively, a group photograph that includes the Owner and Requestor at the exhibition and a screenshot from the National Gallery of Victoria’s website listing both parties as presenters at this exhibition.
Discussion
17.Section 13 of the Act provides an exhaustive list of persons who are entitled to be entered on the Register of Designs (‘Register’) as the registered owner of a design that has not yet been registered. Under the Act, the default position is that entitlement to be entered as the registered owner initially resides with the person who created the design – namely, the designer.3 A designer may be identified by determining the ‘person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form’.4
18.Evidence of entitlement that predates the registration date of the Designs is crucial for determining the entitled person (or persons)5 at the time the Designs were registered. This is because entitlement, by definition, relates to ‘a design that has not yet been registered’.6 It
2 See Attachment C to the Canestrini Declaration.
3 The Act s13(1). This default position as to entitlement will change if certain conditions, as outlined within the provision, are satisfied.
4 LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941, [26] citing with approval Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75, 80.
5 The Act s 13(3)(a).
6 Ibid s 13(1).
follows that evidence which is not at least contemporaneous with the registration date of the Designs is unlikely to have significant probative value in establishing entitlement. Equally, evidence of entitlement must pertain to the design under consideration and not one which merely happens to be similar.7
19.In the present matter, the Owner is listed as being the sole designer of the Designs. As such, the Owner’s entitlement to the Designs is contingent on them being found to be the designer of the Designs. As discussed above, the Owner declined to participate in the present matter. Consequently, there is no evidence or submissions filed in support of their entitlement to the Designs. However, the mere absence of such material does not mean that the registration of the Designs will be automatically revoked.8 The onus remains with the Requestor to establish, on the balance of probabilities, that the Requestor was an entitled person and the Owner was either
(1) also an entitled person or b) not an entitled person at the time the Designs were registered. For the discussion that follows, it is convenient to analyse the merits of the Request with respect to the Designs on an individual basis.
Australian design number 201911963
20.The Requestor’s entitlement to the 963 Design turns on whether they can establish that they were the designer of same. Attachments E.8 to E.10, G.2 and H.3 to the Canestrini Declaration are relevant in this regard.9 The Requestor describes these Attachments as containing ‘numerous design versions for the “Cannon Vase”’ which were created as part of their product designing role in the ‘Formacy’ business with Ms Joachim and the Owner.
21.As a preliminary, I note that only one of the ‘design versions’ contained in these Attachments is dated – namely, Attachment G.2 which contains a photograph with published on 15 March 2018. The Requestor has provided copies of email correspondence which demonstrate that Attachments E.8 to E.10 were attached to an email from the Requestor to the Owner dated 15 November 2017.10 Meanwhile, the ‘info sign’ document in Attachment H.3 is visible in the photograph in Attachment G.2. The implication being that the document in Attachment H.3 must have necessarily existed prior to the photograph being published on 15 March 2018. As
7 Australian Fitness Supplies Pty Ltd v Rasheed Rane [2013] ADO 6, [36].
8 The Act s 118(1) provides that the Register is prima facie evidence of any particulars entered in it.
9 See Annexure 1.10 Attachment F.3 to the Canestrini Declaration.
such, I am satisfied this evidence is relevant to establishing the Requestor’s entitlement to the 963 Design as at the date of the registration.
22.In my view, the evidence filed in this matter supports the Requestor’s assertion that they were the sole designer of the 963 Design. The draft versions of the 963 Design supplied by the Requestor to the Owner demonstrate that the Requestor conceived the visual appearance of the 963 Design while it came to fruition in late 2017. For example, email exchanges in August and October 2017 reveal that the Requestor circulated alternative design versions of the ‘Cannon Vase’ to the Owner and Ms Joachim seeking feedback before continuing development of the design.11 Similarly, an email dated 15 November 201712 confirms that the Requestor provided the Owner with ‘final version renders’13 of the 963 Design. This was supplemented by further correspondence dated 20 November 201714 from the Requestor to the Owner, which attached both the schematic and rendered version of the cone base as it appears in the 963 Design.
23.The correspondence in evidence indicates that the ‘peer feedback’ provided by the Owner was limited to contributing practical information and raw data. For example, the Requestor emailed the Owner on 20 November 2017 seeking clarification regarding the diameter of the glass vase to which the Owner responded with ‘200mm’.15 Similarly, in an email dated 6 December 2017,16 the Owner notified the Requestor that they would be meeting the woodturner and needed the documentation for the new base. An email exchange subsequently ensued between the parties discussing whether the sphere that appears inside the vase of the 963 Design should be permanently attached. The exchange concluded with the Owner asking if the Requestor could ‘work on something tonight so I'll have it tomorrow when I meet him?’ and the Requestor responding ‘Is that [being the attached documents of the 963 Design] sufficient? I think he will get the idea with this...’. As regards to Ms Joachim’s ‘peer feedback’, there is only one email in evidence whereby Ms Joachim replies to the Requestor’s proposed design modification with ‘I like it! Clever’.17
11 Attachments F.2 and F.4 to the Canestrini Declaration.
12 Attachment F.5 to the Canestrini Declaration.
13 Attachments E.8 to E.10 to the Canestrini Declaration reproduced in Annexure 1.
14 Attachment F.6 to the Canestrini Declaration. 15 Attachment F.5 to the Canestrini Declaration. 16 Ibid.
17 See Attachment F.4 to the Canestrini Declaration.
24.Taken at face value, the evidence filed supports the proposition that it was the Requestor, not the Owner or Ms Joachim, who conceived of the visual features of the 963 Design and reduced it to a visible form. Based on the evidence before me, the ‘peer feedback’ provided by the Owner and Ms Joachim did not have a material effect on the final appearance of the 963 Design. Rather, any feedback merely affirmed the Requestor’s original conceptualisation of the 963 Design and, at its highest, contributed minor refinements to the overall appearance of same.
25.I am mindful that the correspondence in evidence may not reflect all interactions between the Requestor, Ms Joachim and the Owner. Likewise, no partnership agreement is in evidence nor have further particulars been disclosed regarding the roles assigned to the other partners in the ‘Formacy’ business. As such, there is a degree of uncertainty inherent in determining the rights and nature of the respective contributions made by each party to the creation of the 963 Design. Whatever uncertainty exists is, however, counterbalanced by the fact that the Owner: i) prima facie relinquished any potential claim to the 963 Design in their Resignation Email, ii) declined the opportunity to contest the evidence filed and to scrutinise the Requestor’s version of events and iii) acquiesced to the 963 Design being exhibited as the Requestor’s design. These facts are consistent with the content of the Resignation Email. Accordingly, the Requestor’s assertion that they were the sole designer of the 963 Design is plausible in the present circumstances. In the absence of any evidence to the contrary, I find it more probable than not that the Requestor was the sole designer of 963 Design.
26.There is nothing in evidence to suggest the Requestor had any contractual relationship with the Owner (or, for that matter, Ms Joachim) nor is there any suggestion that the 963 Design had been assigned. It follows that as the sole designer of the 963 Design, the Requestor was the only person entitled to be the registered owner of the 963 Design.
Australian design number 201911962
27.The Requestor claims entitlement to the 962 Design based on being the sole designer of same. As such, the Requestor’s entitlement to registration rests on the establishing that they created the 962 Design and reliance is placed on the designs disclosed in Attachments E.1 to E.3, E.5 and E.6 to the Canestrini Declaration. The designs disclosed in these Attachments are undated and, in contrast to the Attachments adduced in relation to the 963 Design, no supporting
material has been provided to indicate when the designs disclosed were created or to whom they were circulated. As such, the probative value of this evidence is accordingly diminished.
28.Be that as it may, a more significant difficulty faced by the Requestor is that the evidence filed does not support that the Requestor created the design as it appears in the registered representations of the 962 Design. This is because the registered representations of the 962 Design possess several visual features that are either different to or absent in the designs disclosed in the Attachments. This is most evident in: a) the manner by which the side handles affix to the pedestal base of the 962 Design, b) the thickness of the pedestal base and c) the absence of the sphere inside the vase. While it is true that each of the designs disclosed in the Attachments share a degree of similarity to the registered representations of the 962 Design, mere visual similarity of any one of the designs disclosed does not, without more, establish the Requestor’s entitlement to the 962 Design.
29.Even if I were to accept that the Owner took some visual features from each design disclosed in the Canestrini Declaration in order to create the 962 Design, this alone would not deprive the Owner of being considered the designer of same. This is because it has been recognised that a design, which merely combines visual features from existing designs, can nevertheless still give rise to a new and distinctive design for the purposes of the Act.18 Similarly, the Resignation Email does not disentitle the Owner because it specifically pertains to designs created during the ‘Formacy’ business partnership. There is nothing in evidence to suggest that the 962 Design, as registered, was conceived or existed during the partnership period. This contrasts with the circumstances of the 963 Design wherein the evidence filed clearly demonstrated that the design had been conceived, fully matured and indeed subsequently exhibited in its registered form by the Requestor prior to the application date of the 963 Design.
30.In the present matter, the 962 Design unquestionably shares similarities with certain visual features of the designs disclosed in Attachments E.1 to E.3, E.5 and E.6 to the Canestrini Declaration. However, in my view, none of the designs disclosed sufficiently anticipate the design as it is depicted in the registered representations of the 962 Design. Put simply, the substantial visual differences between these designs and the 962 Design undermines the Requestor’s claim to entitlement of the 962 Design. When these differences are considered in
18 LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941, [12].
combination with the absence of any dated material, I am not satisfied that the Requestor was the designer of the 962 Design.
31.As mentioned above, the Requestor has not contended that any contractual relationship existed outside of the ‘Formacy’ business partnership nor has there been any suggestion of assignment of the 962 Design. It follows that the Requestor has failed to satisfy me that they were a designer, or otherwise entitled to proprietorship, of the 962 Design.
Decision
32.Section 52 of the Act relevantly provides:
52 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.
33.The Request is successful with respect to the 963 Design. At the time of registration of the 963 Design, I am satisfied that Manuel Canestrini was the person entitled to be entered on the Register as the registered owner of this design and Ilan El was not so entitled. Pursuant to s 52(2)(a) of the Act, I hereby make a written declaration specifying that Manuel Canestrini
was the only entitled person to Australian design number 201911963 at the time it was registered.
34.Section 52(3) of the Act requires that parties must be notified when the registration of the 963 Design is revoked and that an entry in the Register be made to this effect. I note that the 963 Design was also examined in parallel with these proceedings and a ground for revocation was identified. This ground for revocation was not overcome within the period prescribed and registration of the 963 Design subsequently ceased on 18 May 2020. While it may seem redundant to revoke a design that has already ceased at examination, the effect of each appears to be slightly different. A declaration under s 52(2)(a) is only available where a decision is also taken to revoke registration. It is important that the particulars of the Register accurately reflect both the true circumstances and the rights of the parties. The registration of Australian design number 201911963 is to be revoked one month from the date of this decision. If the Registrar of Designs is served with a notice of appeal before that time, I direct that revocation shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this registration should be in accordance with the Court’s order or direction.
35.The Request is unsuccessful with respect to the 962 Design. Based on the evidence before me, I am not satisfied that Manuel Canestrini was an entitled person at the time of registration of the 962 Design. I decline to revoke registration of Australian design number 201911962. Accordingly, the power to make a declaration under s 52(2) of the Act in relation to Australian design number 201911962 is not enlivened.
Nicholas Barbey Hearing Officer
Oppositions and Hearings Trade Marks and Designs 25 June 2020
Annexure 1
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