Manuel Canestrini and Ilan El - [2020] ADO 2

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…

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.

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Details

Case: [2020] ADO 2
Decision Date: 25 June 2020

CaseChat Overview and Summary

The case involved a request for the revocation of two designs under section 51 of the Designs Act 2003 (Cth) by Manuel Canestrini against the registered owner, Ilan El. The dispute centred on the ownership and entitlement to two Australian design numbers: 201911963 and 201911962. The matter was heard in the Federal Circuit and Family Court of Australia.

The court was required to determine two main legal issues. First, whether Canestrini was the sole designer of Australian design number 201911963 and thus entitled to be recorded as the registered owner. Second, whether there was sufficient evidence to establish that a person other than El was an entitled person in relation to Australian design number 201911962. The court had to decide whether to revoke the design and issue a declaration under section 52 of the Designs Act 2003 (Cth) for each design.

The court found that Canestrini was indeed the sole designer of Australian design number 201911963 and, therefore, entitled to be recorded as the registered owner. Consequently, the design was revoked, and a declaration was made specifying Canestrini as the entitled person. However, the court found insufficient evidence to support the claim that a person other than El was an entitled person in relation to Australian design number 201911962. As a result, this design was not revoked, and no declaration was issued.

The final orders were that Australian design number 201911963 was revoked, and Canestrini was recorded as the registered owner. A declaration under section 52 of the Designs Act 2003 (Cth) was issued specifying Canestrini as the entitled person. Australian design number 201911962 remained registered in the name of El, with no revocation or declaration issued.

Orders