Metroll Queensland Pty Ltd v Mark Nicholas Collymore, Courier Pete Pty Ltd [Sec=Unclassified]

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Design 310528 in the name of Mark Nicholas Collymore, and Designs 312217 and 312218 in the name of Courier Pete Pty Ltd,
and
Requests under s.51 for revocation, by Metroll Queensland Pty Ltd

Delegate: Dave Herald

Representation: Requestor: R Wulff, Patent Attorney of Griffith Hack
Design owner: Mark Collymore (in person)

Decision:
Design 310528: registered owner is an entitled person, and no other person was an entitled person. No declaration under s.52.

Designs 312217 and 312218: Metroll Queensland was an entitled person at the time the designs were first registered. Declaration under s.52 made, and these designs revoked.

Background

Design 310528 was filed on 21 Sep 2006, and registered on 18 Oct 2006 in the name of Mark Nicholas Collymore. Designs 312217 and 312218 were filed on 27 Oct 2006 and registered on 3 January 2007 in the name of Courier Pete Pty Ltd as assignee of Mark Collymore (who is also the principal of Courier Pete Pty Ltd).
The designs relate to rainwater tanks having a modular construction. The representations filed for design 310528 were hand-drawn, and indicate a tank having a smooth surface. On 17 October 2006 the applicant emailed a number of photographs of the ‘made up’ version of the tank having a corrugated surface. The design was scheduled for registration the following day, and it seems likely that the photographs were not considered prior to registration occurring (a situation that does not invalidate that registration – see Reckitt Benckiser Inc [2008] ADO 1, paragraphs 21 and 22). According to Collymore, he was advised by the Designs Office that ‘the design does not cover the photos that I emailed’. This led Collymore to filing Designs 312217 and 312218 on 27 October 2006 under cover of a letter stating that ‘This is a reapplication of the design that has been registered under Registration number 310528’.
The owner sought examination of all three designs, and certificates of examination were issued on 10 Aug 2007. The representations of 310528 show a rainwater tank with smooth surfaces. The representations of 312217 and 312218 show rainwater tanks where the surface of the body section is corrugated.
On 16 May 2007 Metroll Queensland Pty Ltd (Metroll) requested revocation of designs 312217 and 312218 under s.51 of the Act – on grounds relating to entitled person. Following an evidentiary process, the matter was heard in Canberra on 14 October 2008; Metroll was represented by Mr R Wulff (Patent attorney of Griffith Hack, Sydney). Mr Collymore appeared in person.
The primary argument of Metroll was that they were entitled to the designs by reason of an employer/employee relationship. During the hearing I expressed concern about the substance of their argument, and the absence of any challenge to the entitlement of Design 310528. I indicated that in the absence of a s.51 request, I did not think I was in a position to make any determination about the entitlement of design 310528, or proceed on any basis other than its entitlement was correctly stated on the Register – with that entitlement being the starting point for any consideration of the entitlement of designs 312217 and 312218. The following day Metroll filed a request under s.51 with respect to Design 310528. Consistent with a discussion that occurred at the hearing, on 3 November 2008 I proposed to the parties that ‘the decision on design 310528 will be made on the basis of the evidence that has been filed with respect to designs 312217 and 312218, together with the submissions made at the hearing with respect to those two designs.’ The matter has proceeded on that basis.
In broad terms, the present dispute involves the following:
·Mr Collymore was an employee of Metroll who had risen up through the ranks. At the relevant time he was the factory foreman, although there were some periods where he was head of the tank making section.
·Mr Collymore asserts that he came up with his idea for tanks at his home property, and filed a design application. Subsequently he told his boss (the assistant manager of Metroll) about his design, at an off-site location – swearing him to secrecy vis-à-vis Metroll (their employer). A couple of weeks later he was called to a meeting with the manager and assistant manager. Collymore was upset to discover that the assistant manager had told the manager about his design, asserting that the assistant manager asked him to make ‘one of my designs’, and that he agreed only after asserting his ownership of the design and that he intended charging a royalty. On this basis, Collymore asserts that he is the sole owner of the designs.
·The manager asserts that Metroll owns the designs because they occurred in the course of employment with Metroll. In addition he asserts that he was looking at tank designs over a period, and that in a relevant two-week period had Collymore ‘playing around with’ certain tanks, and that Collymore was no more than one of a team involved with developing the tank. He also exhibits sales orders for tanks said to embody the design that were received before 312217 and 312218 were filed.
The dispute involves just three people – Mr Collymore, the assistant manager (Mr Morrison), and the manager (Mr Harland), who have all provided declarations in these proceedings. In dealing with this matter, it is appropriate to first deal with the entitlement to design 310528.
Relevant precedent
The primary argument of Metroll is that they were entitled to the designs by reason of their employment of Collymore – with entitlement flowing to Metroll by reason of s.13(1)(b) of the Designs Act 2003.
There is little precedent on entitlement under the Designs Act 2003. In that regard I noted in Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8:
19. In my opinion, the principles relating to inventorship under the Patents Act 1990 apply generally to designership under the Designs Act 2003. Both involve activities of original creativity. Both involve situations where multiple people can be involved in the creative exercise. And both require devolution of title from the creator of the work to the person obtaining the legal monopoly right.
The present case involves an asserted employer/employee relationship. In this regard it must be noted that (unlike the equivalent provisions in the Patents Act 1990) s.13(1)(b) of the Designs Act 2003 expressly provides that if the designer created the design in the course of employment, or under contract, with another person, the other person is entitled to the design unless the designer and other party have agreed to the contrary. However in the context of employment, the purpose of this elaboration is merely to make clear that the usual principle of the design being owned by the employer can be excluded or modified by agreement, rather than establishing any new principle of entitlement. [See paragraphs 7.6 and 7.7 and Recommendation 66 of the ALRC report into the Designs system.]
A patent case of particular relevance to the present situation is Spencer Industries v Collins [2003] FCA 542, 58 IPR 425. Indeed, this was the only precedent case referred to by the parties. The case concerned the rights to an invention created by the sales manager of a company – a Mr Collins. There was no written employment contract which defined with precision the scope of Mr Collin’s employment, leading the court to give consideration to the nature and seniority of the employee’s position with the company, the nature of his duties as a sales manager, and whether he received a specific directive relating to the invention. Given the close similarity to the present case, it is appropriate to summarise the conclusions of that decision. The court found:
·The position was essentially a sales position. However Mr Collins occasionally undertook tasks outside his area of principal responsibility, and could be given reasonable directions to perform duties outside of the area of sales;
·It fell within the scope and course of employment as a sales manager for Mr Collins to recommend expansion of the product range on the basis of his contact with purchasers and potential purchasers.
·Mr Collins contributed to the invention. Those activities were outside his ordinary duties as Sales Manager but within the residual area in which it was open for Spencer Industries to direct him (whether expressly or implicitly), to use his technical skills to undertake additional duties.
·The court rejected the notion that because Mr Collins had a duty as sales manager to advance the sales of Spencer any invention made by him which was capable of advancing Spencer Industries’ sales was an invention made by him within the course and scope of his employment.
·It was no part of Mr Collins’ ongoing duties to invent products for Spencer Industries. Nor was the invention the outcome of a direction given to Mr Collins in the residual area in which he could be directed to perform tasks. The invention was not the product of the work which Mr Collins was paid to do.
·The fact that Mr Collins envisaged that the invention would be exploited by Spencer Industries did not establish that he undertook the invention within the course and scope of his employment
Significantly, while s.17 of the Patents Act 1990 does not have a provision equivalent to s.13(1)(b) of the Designs Act to deal with things created ‘in the course of employment, or under a contract’, the decision expressly uses the phrase ‘in the course and scope of employment’ in reaching its conclusion. In my view the word ‘scope’ is largely redundant over ‘course’, as any course of employment necessarily has a scope that is defined by that course of employment. In my view there is nothing arising from the respective contexts in which the phrases are used, or in the ALRC report on Designs system, to indicate that ‘in the course of employment’ as used in the Designs Act entails a materially different interpretation to the phrase ‘in the course and scope of employment’ as used in the Spencer Industries case.
In considering this phrase, Branson J rejected the proposition that any invention made by Mr Collins which was capable of advancing Spencer Industry’s sales was an invention made by him in the course and scope of employment – on the basis that such an interpretation was unacceptably broad in ambit. Rather Branson J considered the phrase referenced those activities which a person was paid to do – either by way of an ongoing expectation with regard to normal duties, or consequential to a specific direction. It follows that the phrase ‘in the course of employment’ as used in s.13(1)(b) of the Designs Act should be interpreted on the same basis.
Consequently, in order for Metroll to establish entitlement to the design by reason of s.13(1)(b), it is necessary that they establish either that Mr Collymore’s normal duties included an ongoing expectation that he would be engaged in authoring designs (or at least involved in creative activity that might result in the creation of a Design right), or that there was a relevant direction that he perform certain tasks which led to the creation of the design right.
Entitlement – Design 310528
Metroll’s claim to entitlement to design 310528 is entirely associated with Mr Collymore’s employment with Metroll, and expectations about his normal duties. It does not rely upon any substantive assertions of relevant specific directions. Accordingly it is necessary to understand some of the details of that employment.
Mr Collymore’s employment with Metroll can be summarized as follows:
- 1999 – mid 2001: general labourer/yardman, and truck driver
- Mid 2001 – late 2004: yardman or labourer in the despatch section
- Late 2004 – Feb 2005: head of despatch section
- Feb 2005 – Aug 2005: purchasing officer. Also worked as a contract driver
- Aug 2005 – head of tank making section – but was reluctant to take the position. Performed the job until another person trained, reverting to the purchasing officer after about 5 to 6 weeks. Learnt the necessary steps in making round conventional corrugated rainwater tanks
- Jan 2006 – Nov 2006: Factory Foreman. Duties included maintaining production levels of all products. Collymore asserts that he had little to do with the tank making section.
Contractual agreement regarding entitlement
A first consideration is whether the employment contract dealt with the entitlement to any intellectual property rights generally, or designs in particular, that were created by the employee during the term of the contract – whether during the course of employment or otherwise. Metroll relies on a contract of employment signed on 7 July 2003. The contract is a generic contract for use by all employees, and is included as part of a much larger ‘Employment induction manual’.
Metroll relies primarily on para 3 of the contract, which states:
I acknowledge that all processes, product and customer information, designs and equipment within Metroll manufacturing facilities, warehouses and surrounding exterior are the property of Metroll Queensland Pty Ltd and accordingly I undertake not to divulge any information obtained either directly or indirectly from performing my duties with Metroll that may in any way be to the detriment of the company’s operations. This confidentiality extends to “know-how”, customers, suppliers, manufacturing methods, research and development, documentation, sales, profitability and any other financial information.
In my view, this paragraph does not deal with the entitlement of designs (or other intellectual property) created by the efforts of employees – whether that occurred during working hours or in their own time. It is no more than a general non-disclosure agreement with respect to Metroll’s material or intellectual assets. The fact that the paragraph refers to ‘designs’ in the first sentence is of little assistance, as that is clearly a reference to existing designs, not to the entitlement to designs created by the particular employee. In any event, I do not consider the paragraph can reasonably result in a claim to ownership by Metroll for things created by employees in their own time – whether that occurred outside their premises, or on their premises in accordance with paragraph 27 of their conditions of employment (which deals with private work on company premises).
Metroll also relies on paragraph 16 of the contract, which imposes an obligation to inform the supervisor if the employee becomes aware of any information suggesting ‘illegality, impropriety or conflict of interest’ on the part of another employee in the course of employment. Metroll suggested this paragraph indicates their awareness of intellectual property issues – and that I should read the document in that context. However this clause does not set out the ownership of any intellectual property created during the period of employment, and is therefore of no assistance.
Metroll only included the formal contract in their evidence. However Collymore’s evidence included the entire employment manual. It sets out the conditions of employment – such as leave and pay – in 39 paragraphs. I have perused that document, and can find nothing regarding the entitlement to any intellectual property created during the period of employment.
In summary, the written documents associated with Collymore’s employment do not set out any regime for dealing with intellectual property created during the course of employment – whether that be in work or personal time – that displaces the default entitlement set out in s.13(1)(b). It is therefore necessary to consider the nature of Collymore’s employment
Employment duties
The specific duties of the various positions that Collymore occupied in Metroll are not documented. Nevertheless, there appears to be substantial agreement about the duties expected of Collymore.
Collymore asserts that his position as factory foreman was to ensure production was maintained at all times, organise staff, produce work schedules within required time frames and to oversee the general running of the factory. He asserts that at no time was it ever suggested to him that he was employed to improve the products or devise new products.
Harland describes Collymore’s duties of as the factory foreman as follows:
Collymore was the Factory Foreman of the whole Metroll Towoomba factory, which includes the tank factory, which is one part of the same building of a total size of approximately 54 meters by 60 meters. The tank section which occupies about one third of the area of the factory building also relies on materials produced in the remainder of the factory. Collymore was responsible for the manufacture of the material for the tank bodies, and materials for the tops and bases for the tanks in different parts of the factory. These items were then fabricated into completed tanks in the tank section. Some machines are used for making more than one product, such as the curving rollers used to make the barrel part of the round water tank as well as ‘bullnose roof ends”. Collymore had responsibility to co-ordinate production of these tank components when he was factory foreman and to ensure that the tank factory was adequately supplied with these components to suit the orders received by Metroll for tanks and would often give a hand with tank making in order to speed up manufacturing. Collymore was responsible to Morrison for all production of Metroll including of tanks. Collymore was also involved in ensuring the timely manufacture and delivery of tanks by Metroll, particularly as “Collymore’s” (Courier Pete Pty Ltd’s) truck was doing deliveries for Metroll.
Harland goes on to declare:
In late 2005 and 2006 the tank making side of Metroll’s business was booming… Metroll could barely keep up with the demand for rain water tanks. That is the reason I was insistent Collymore should take more interest in tank making. Collymore was actively involved not only in the supervision of the team of employees making tanks but also physically involved in operating the machinery to make tanks and worked with me and other Metroll employees to develop a more efficient method to manufacture tanks, reduce and/or eliminate the bracing required to prevent distortion of the tanks by working out better designs. The development of the square “stubby” or “modular” tank was part of that process and was part of Collymore’s job as foreman.
In an earlier declaration Harland declares:
On 22 May 2006 I instructed the payroll officer to increase Nick Collymore’s pay… I asked Russell Morrison at this point, to give the design of the Spacesaver tanks greater focus, and in particular the baffle configuration used, and suggested in place of the post and rail method we had been using for some time that we revisit older methods used, such as the curved ring method. This he did and instructed Nick Collymore to develop this design and find alternative solutions. Within the two week period before 11 October 2006 at Metroll’s premises I thought of different configurations, with flatter surfaces to form a squared cylinder and during this time Nick Collymore was “playing around” with 3 section versions of the earlier Spacesaver design…
From reading these various descriptions of Collymore’s duties, I do not get any sense of Mr Collymore being employed with an ongoing expectation that he would be involved in creativity in the design of tanks. It may well be that Collymore learnt how to build tanks, and on occasions was involved in actually building tanks. But there is nothing to suggest any general expectation that he would be involved with creating new designs for tanks (or anything else). Rather it would appear that Collymore’s primary role was that of construction and ensuring workflow through the factory – with the possibility of other relatively minor activities arising by way of specific direction.

Harland makes reference to having Collymore ‘play around’ with three-section versions of the Spacesaver tank. It is reasonable to conclude that such playing around would have expectations of creativity, with any resultant designs thereby arising ‘in the course of employment’ with Metroll. However those activities occurred in the two weeks prior to 11 October 2006 (that is, subsequent to 26 September). Since the design was filed on 21 September 2006, Metroll can have no claim to entitlement to this design arising from these activities.
Collymore asserts that he came up with the concept for the design as a result of watching a colt playing with a hose in a water trough on his property. Harland does not describe any specific ‘eureka’ moment in the development of the designs – just that they evolved over a period of time. Significantly, Metroll apparently did not seek revocation of design 310528 because they did not consider the design (which has no indication that the walls are corrugated) to be relevant to their business interests. This asserted lack of relevance is strongly suggestive that tanks having the characteristics depicted in this design were not being designed or built in Metroll at the time that design was filed. Prima facie this supports Collymore’s contention that he came up with the design in his own time.
In conclusion, I am satisfied that Mr Collymore authored design 310528 in his own time; that there was nothing associated with his conditions of employment that created a general expectation that he create new designs for tanks; and there was no specific direction given by the employer that led to the development of this tank. As a result I am satisfied that Metroll Queensland Pty Ltd is not an entitled person in relation to this design, and that Mark Collymore is an entitled person.
Entitlement - Designs 312217 and 312218
The circumstances concerning entitlement to these designs are fundamentally different to those of 310528. In particular, the representations of these designs are photographs of completed tanks taken on the premises of Metroll. Furthermore, some of those photographs had been emailed to the Designs Office on 17 October 2006 – apparently with the intent of having them incorporated into design 310528. Designs 312217 and 312218 arose from the inability to have those photographs included as representations in design 310528.
It is appropriate to note that the determination of newness and distinctiveness is not an element of resolving a request under s.51; such requests are dealt with on a presumption that the design is a registrable design.
In the present case, designs 312217 and 312218 were said to be filed as a ‘reapplication’ of design 310528. However it is unclear to me whether Collymore, as a person prosecuting his own applications, fully understood the relationship between his first design, and the new filings. It is appropriate to note that there are two scenarios:
·Designs 312217 and 312218 are materially the same as design 310528. That is, those designs do not differ in overall impression from the designs disclosed in 310528; or
·There are material differences between Designs 312217 and 312218, and design 310528.
The necessary consequence of the first scenario is that designs 312217 and 312218 are invalid through lack of distinctiveness – design 310528 being part of the relevant prior art base by reason of s.15(2)(c).
In examination, the examiner did not cite design 310528 against the other two designs. I also note that the filing of these two designs occurred following advice from the Designs Office (as expressed by Collymore when making the new applications) that ‘the design does not cover the photos that I emailed’. This is consistent with Designs 312217 and 312218 being materially different from Design 310528. It is appropriate that I proceed on this basis – in the knowledge that if I am wrong on this, these two designs are inevitably invalid (thereby making the issue of entitlement moot.)
The entitlement to designs 312217 and 312218 is inextricably linked with how the tanks shown in the representations of these designs came into existence. The evidence consists of declarations from Collymore, Morrison and Harland, and it is appropriate to summarise the differing accounts of events.
Mr Collymore
Collymore’s evidence relevantly follows on from the filing of his first design application on 21 September 2006. The circumstances from his perspective are:
·On October 3 or 4 Collymore invited his immediate supervisor (Russell Morrison) to lunch at a café some distance from the factory premises. He declares that he wanted to tell Morrison ‘something as a friend and not as a boss, representative or employee of Metroll’, and that what he was about to tell him ‘he {ie Morrison} could not tell anyone at Metroll’. He declares that he told Morrison about his tank design, and that he had applied for design registration.
·About 2 weeks later (which would be about October 17) Mr Collymore was called to a ‘closed door’ meeting with Harland and Morrison. Morrison advised that he had told Harland about Collymore’s design, which greatly upset Collymore. Collymore declares that he did not discuss or explain anything about his design before asserting that he had designed it in his own time; that he had applied for registration; and that Metroll had nothing to do with it. He asserts that both Harwood and Morrison understood and agreed. He asserts that Morrison asked him to make ‘one of my designs’ – and he agreed only after stating that it was a sample and that Metroll had no right to reproduce or manufacture in any way – and that he intended to charge a royalty.
·Having made relevant samples, Harland and Morrison were apparently impressed with the tank. Collymore declares that he asserted Metroll had no ownership of the design, and that Harland and Morrison agreed. Morrison allegedly asked Collymore if he would make a set of modular tanks, which he did. Feedback was positive, and Metroll allegedly went into production without Collymore’s permission
·Collymore asserts that there were discussions about royalty payments every week over a 3 to 4 week period.
Mr Harland
Harland recounts Collymore’s employment history, the development (by a customer) of a ‘Jelly-bean’ tank in early 2005, the growth in demand for rainwater tanks, of the need for Collymore to take a greater role in the tank making section, and ultimately of the need to direct this to happen.
Harland declares that at about the time of increasing Collymore’s the salary in May 2006, he asked Morrison to give the design of a certain tank (the ‘Spacesaver’ tank) greater focus – suggesting particular issues to look at. Harland declares that Morrison did this, and instructed Collymore to develop this design and find alternative solutions.
Harland then refers to the two week period prior to 11 October 2006, where he {i.e. Harland} thought of different configurations and that during this time he had Collymore ‘playing around’ with 3-section versions of the Spacesaver design. He asserts:
After numerous experimental versions in which tank factory hands, Nick Collymore and I took part it became clear that the square middle section was much easier to make than the ends, so I suggested that the 2 square (ie modular) tanks should be used (instead of two half rounds (semi-circle) and 1 square tank) because the quality of the square tanks was better and the quantity of water stored was greater… The creation of workable and easy to manufacture modular tanks took weeks of development by me and others in the tank factory including Nick Collymore, and eventually we were happy with the result and commenced selling these modular tanks.
Harland exhibits several Tank/Order forms said to relate to orders for the new tanks that correspond to the designs. The earliest of these is dated 16 October 2006. These orders provide a schematic of the tank cross-section, the material of construction (which is corrugated steel sheeting), the dimensions of the tank, and the number of modular units in the tank. However the schematic nature of the drawing is insufficient to be satisfied about the appearance of a tank actually constructed in accordance with the order, and no evidence of the appearance of the tanks built consequential to those orders has been filed.
Harland denies having taken part in any “closed door” meeting with Collymore and Morrison – although the statement is ambiguous as to whether the denial is of having a meeting, or the much narrower issue of whether any such meeting was ‘behind closed doors’. Harland makes no reference to anything discussed at that meeting, and asserts that he first became aware of demands for royalty payments in February 2007.
Mr Morrison
Morrison provides a short declaration in support of Mr Collymore. Morrison left Metroll in June 2007. He confirms that Harland instructed Collymore to become more involved with the tank making section in or about the middle of 2006. He notes that Collymore’s duties were mainly with the production of the ‘Spacesaver’ tank, and conventional round tanks.
Morrison declares that in early to mid October 2006 he instructed Collymore (after a request from Harland) to instruct the tank making section with regard to certain developments in two tank designs.
Morrison confirms that he had lunch with Collymore in October 2006, and notes that he became aware of the design of Collymore’s tank at that meeting, and that Collymore had applied for design registration. Morrison provides no other details of that meeting.
Morrison confirms that “1 – 2 weeks” after the lunch meeting with Collymore, he met with Harland and provided him with a sketch of Collymore’s design. He confirms that Collymore subsequently attended the meeting, alleges the meeting was ‘behind closed doors’, and confirms that Collymore advised that he intended to charge a royalty. However Morrison is silent on whether either Harland or he agreed to that royalty demand.
Finally, Morrison states that ‘a prototype tank was manufactured at the factory in accordance with Collymore’s new tank concept’. However Morrison gives no indication of the basis on which that tank was made. Nor is there any express indication of when that prototype tank was manufactured. The positioning of the paragraph after the paragraph describing the meeting prima facie suggests that this was an event that occurred after that meeting – but there is nothing in the paragraph that would preclude the tank from having been made prior to that meeting.
Discussion
The evidence of both parties is characterized by an absence of corroborative evidence of a substantive nature. The evidence is largely assertions based on personal recall. This inevitably invites a debate about which declarant to believe.
One particular issue is when the tanks were actually constructed. Collymore’s evidence was that this followed the meeting with Harland and Morrison, which was about 2 weeks after the café meeting. That would imply a construction date of no earlier than about 17 October. However photographs of tanks were filed in the Designs Office on the morning of October 17 October, and at the hearing Collymore indicated that it would take about 4 to 5 hours to make a tank. Furthermore Harland declares the relevant photographs were taken on 11 October on the company’s camera – which prima facie would have been before the meeting with Harland and Morrison. I accept that the photographs were most likely taken on or about 11 October. However this brings into question Collymore’s account of how the tanks came into existence – which would have been after when the photographs were taken. When I raised this timing discordance at the hearing, Collymore’s response was that the events occurred a long time ago, and that his reference to two weeks might have been in error – it might have been a shorter period. While this might be so, such indefiniteness on a crucial element has an appearance of convenience, and does not assist Collymore – particularly if it is necessary to assess which of Harland’s or Collymore’s account is to be preferred. Nevertheless, rather than simply preferring the evidence of Harland to Collymore, it is appropriate that I deal with the situation as set out by Collymore.
Collymore arranged to meet with Morrison at a café. It is clear Collymore was intent on keeping his design secret from his employer – and sought to obligate Morrison to confidentiality as against Metroll. This undoubtedly placed Morrison in a difficult situation, as Morrison presumably had an obligation to his employer by way of paragraph 16 of the contract of employment used by Metroll – to disclose to his supervisor any information suggesting ‘illegality, impropriety or conflict of interest’. Prima facie this would include the fact that Collymore had developed a design relevant to the business interests of Metroll and was intent on maintaining it secret from Metroll – presumably for personal gain. While Collymore was greatly upset that Morrison told Harland about his design, I find it unsurprising that this occurred – Morrison’s obligations to his employer long predated the confidentiality that Collymore endeavored to establish.
Collymore relates how at the meeting with Harland and Morrison he was asked to ‘make one of my designs’ – which led to the construction of the tanks that are the subject of designs 312217 and 312218. Logically there are only two outcomes that could arise from that instruction. Either:
·Collymore built tanks that were in accordance with his design. Entitlement in that design was already established by way of his earlier registration, and could not be changed by such a workplace direction; or
·Collymore built tanks embodying a new design. And since that new design came about as a result of specific direction by the employer – entitlement properly lay with the employer.
The fact that Collymore applied for two extra designs based on photographs taken of those tanks is a prima facie concession that the tanks were not substantially similar in overall impression to Collymore’s registered design – that they constituted new designs. In any event (and as I noted previously) it is appropriate to determine this matter on the assumption that the designs were different – since if they are the same, designs 312217 and 312218 are necessarily invalid. That is, on the assumption that the designs are different from Collymore’s earlier design, the work place direction gave rise to the creation of new designs, and under s.13(1)(b) entitlement to those designs lies with Metroll, subject only to there being a contrary agreement.
Collymore’s evidence suggests that he felt coerced into making the tanks. This is unsurprising, given his initial efforts to prevent Metroll learning about his ideas. Also it seems possible that Collymore thought his design rights covered the principle of construction of such tanks, rather than being limited to a specific visual appearance. In the event he did not make tanks in accordance with his original design (that is, having the specific overall appearance of that design); he created tanks which bore a different overall appearance to the tanks of his original design. Furthermore, to the extent Collymore used knowledge of his earlier design as an input to the task requested of him, it was incumbent upon him obtaining express agreement about the reward associated with such knowledge prior to making any tanks. Otherwise Metroll was reasonably entitled as the employer to ask him to make tanks using whatever skills and knowledge he had in his possession. And while Collymore states that he asserted ownership and a right to royalties, mere assertion of rights by one party does not constitute an agreement between the parties.
Consequently I am of the view that Metroll has established that they are an entitled person with respect to designs 312217 and 312218 on the basis that those designs were created as a result of a specific workplace direction by Collymore’s employer, Metroll – see Spencer Industries v Collins, supra. Conversely Collymore (and hence his assignee Courier Pete Pty Ltd) was not an entitled person at the time those designs were first registered – as all rights belonged to Metroll as a result of the workplace direction.
Accordingly I do not need to determine whether I should prefer the evidence of Harland to that of Collymore (and Morrison). However for completeness I should note that Harland’s evidence (if preferred) would suggest that the tanks came into existence as a result of Collymore ‘playing around with’ the ‘Spacesaver’ tank; that this occurred as part of a work place directive involving an implied expectation of creativity; and accordingly any designs that arose from that activity properly belonged to Metroll. To the extent that Collymore used knowledge of his earlier design as an input to this activity, my comments in paragraph 54 apply mutatis mutandis.
In reaching this conclusion, I note there is some disagreement about who was the author of the design, dependant upon whether the evidence of Collymore or Harland is preferred. Collymore clearly asserts that he is the sole author, while Harland suggests that other employees might have been involved. I do not need to resolve this at this time, as the entitlement arising from any of Metroll’s other employees would presumably flow to Metroll by reason of their employment. However if a new application is filed pursuant to s.55, it will be incumbent upon Metroll to correctly identify in that application all authors of the design.
Conclusions
Design 310528
I am satisfied that the entitled person at the time this design was first registered is the person entered on the register as the owner of that design, and that there are no other entitled persons. Accordingly I refuse to make any declaration under s.52(2).
Designs 312217 and 312218
I am satisfied that Metroll Queensland Pty Ltd was an entitled person at the time these designs were first registered. I am also satisfied that the person entered on the register at that time – Courier Pete Pty Ltd – was not an entitled person. As a result, the conditions of s.52(2)(a) are satisfied.
Section 52 involves a discretionary power to make a declaration. I am unaware of any issue which militates against me making the declaration in the present case. Accordingly, pursuant to s.52(2) of the Designs Act 2003, I declare that at the time designs 312217 and 312218 were first registered, Metroll Queensland Pty Ltd was an entitled person.
It follows, pursuant to s.52(3), that Designs 312217 and 312218 are hereby revoked. I direct that entries in the Register be made to that effect.
Costs
Costs before the Registrar normally follow the event. I note that the primary argument of the requestor related to a design that was not included in the proceedings until after the hearing. Ultimately both parties had partial success. Accordingly I consider it appropriate to make no award of costs.
D Herald
Deputy Registrar of Designs
1 December 2008

[2008] ADO 9

1 December 2008