Milton v Tubemakers of Australia Limited

[1995] ADO 1

official notice

decision of a delegate of the REGISTRAR OF DESIGNS

Designs:  Nos. 118785 and 118786 in the name of
RK & DM Milton t/as Milton Outdoors.

Article:  Gate Frame.

Action:  Extension of the Period of Registration; Notices under S.27A(4) by Tubemakers of Australia Limited; hearing.

Decision:  Issued            .

Abstract:  Extension of periods of registration granted;  evidence of the declarants about common practice in the industry is of low probative value;  certain exhibits provide no evidence of relevance; designs are not lacking in newness or originality. 

DESIGNS ACT 1906

decision of a delegate of the registrar of designs

Re:Registered Designs nos. 118785 and 118786 both in the name of RK & DM Milton t/as Milton Outdoors and Notices under Section 27A(4) by Tubemakers of Australia Limited.

BACKGROUND

Application for a registered design no. 3156/93 was lodged on 5 October 1993 by RK & DM Milton t/as Milton Outdoors (hereinafter referred to as "Miltons".  Application for a registered design no. 3575/93 was lodged on 12 November 1993 by the Miltons as a
s. 22C divisional application of 3156/93.  The applications were registered on 22 November 1993 under respective registration numbers 118785 and 118786.  The priority date for purposes of
s. 17 of the Designs Act is 5 October 1993.

The initial 12 months registration expired on 22 November 1994. The latest date for lodging a notice under section 27A(4) was 22 October 1994.

On 12 October 1994 Tubemakers of Australia Limited (hereinafter referred to as the "informant") lodged a notice under section 27A(4) common to the two designs.  The notice was accompanied by  statutory declarations by David Ryan (with exhibits DR-1 to
DR-4), Ian Krix and Paul Greatrex.  The notice refers to material allegedly published in documents in Australia before the priority date and which is considered relevant to whether the designs were new or original at the priority date.

On 1 November 1994 comments on the s.27A(4) notices were provided on behalf of the Miltons by patent attorneys Griffith Hack & Co.  On 15 December 1994 both parties were advised that the delegate of the Registrar of Designs had considered the material filed and the answering comments and proposed to extend the period of registration of each design since he was of the opinion that the designs had not been prior published by the information provided by the informant.  The reasons were set out in a written opinion by the Acting Deputy Registrar of Designs dated 25 November 1994.  The informant then requested to be heard on the matter.

The matter was heard in Canberra on 3 March 1995.  Mr Anthony Quahe of counsel instructed by Mr Terry Walsh, solicitor of Jackson McDonald, appeared by telephone from Perth for the Miltons.  The informant was represented in person by Mr Greg Turner, patent attorney of Spruson & Ferguson, Sydney.

The dESIGNS

The article to which the designs are applicable is a Gate Frame.  The representations for design 118785 illustrate a gate frame of variable width and height formed of a particular tubing profile or section, the side, top and bottom frames being straight.  The representations for design 118786 illustrate a gate frame of variable width and height with an additional frame portion on one side frame and all formed of the same tubing profile as for design 118785.  The additional frame portion of a gate made to design 118786 could permit hand access through the gate or accommodate a latch bolt.  The designs include mitre corner joints.

The statement of monopoly for design 118785 is:

"Monopoly is claimed in the features of shape or configuration of the gate frame as illustrated in the representations the width and height of the gate frame are variable as illustrated also in the representations."

The statement of monopoly for design 118786 is:

"Monopoly is claimed in the features of shape or configuration of the gate frame as illustrated in the representations, the width and height of the gate frame are variable as illustrated."

SUBMISSIONS

Regarding Mr Turner's submissions at the hearing, I summarise these as follows:

.   There can be no novelty in the designs by virtue of the height and width proportions since from the statement of monopoly these are variable.  As for the particular section from which the gate frame is to be made, this section is the subject of design 109908 to the informant Tubemakers, which design registration was published in January 1991.  Exhibit DR-1 is a copy of the design registration.

.   An argument to the effect that newness or originality resides in the application of the particular section to a gate frame must fail in view of the declarations submitted by the informant.  Mr Turner highlighted Exhibit DR-4 to Ryan's declaration, being a "Customer Information Sheet" distributed by BTM Tube Products, a division of Tubemakers, which in part refers to the use of a tube section, apparently that of design 109908, being "great in beds, but is equally at home as a fence or a gate rail".  He submitted that the evidence of Ryan in paragraph 4 establishes that the tube section was employed in the fencing industry before October 1993 - he said other exhibits to Ryan's declaration support this.

.   Tubemakers manufactured the tube section of design 109908 and promoted it in the fencing industry for use in fences or gates.  It cannot be argued that the Miltons have exercised any imagination or creative activity in taking the Tubemakers section and registering it in respect of a gate frame, of any proportion. 
.   Prior to October 1993 it was common practice in the fencing industry to construct gate frames so that the horizontal and vertical rails were of the same section - see the declarations filed by the informant.  The Miltons have employed a known section and using trade variants have applied it to the configuration of known gates.

.   In relation to design 118786, it also includes a hand aperture in the gate frame.  The declarations filed indicate that it was common in the industry to employ hand apertures surrounded by the section which formed the gate frame.  This design therefore differs in immaterial details or features commonly used in the industry from the previously published material.

Mr Turner also referred to the relevant law regarding newness of designs and discussed aspects of the opinion of the deputy registrar.  I will refer to relevant points later where necessary.

I summarise Mr Quahe's submissions on this matter as follows:

.   The comments previously provided by Griffith Hack & Co in this matter are endorsed and repeated.  (These comments discussed each declaration and the exhibits and concluded with general comments and observations on the newness or originality of the designs.)

.   The evidence provided by the informant should be ruled inadmissible or otherwise given little weight.  The three declarants do not sufficiently establish their standing regarding relevant experience in the industry in order for them to state what was common in the industry or indicate what use was made of the Tubemakers tubing section.  Krix declares no experience outside of his employment with Tubemakers to support his purported knowledge of the common practice in the industry.  The position of Greatrex is similar, there being no particulars of his 34 years experience with Tubemakers to warrant admitting (and accepting) his opinion evidence about common practices in the industry.  Ryan has had 26 years employment with Tubemakers but gives insufficient detail of his duties and hence experience of the right kind to justify admitting and accepting his evidence about common practice in the industry.

.   Exhibits to Ryan's declaration are inadmissible evidence.  Exhibit DR-2 is a "certificate" presented by a division of Tubemakers to Finedesign being an "award for innovation in the use of steel tubing", but is not necessarily related to the use of the section of design 109908.  Exhibit DR-3 is said by Ryan to be copies of promotional material produced and distributed by Finedesign before October 1993, being photographs showing fencing arrangements - Ryan is not the author of this material and has no personal knowledge as to the truth and source of the information contained in this material.  The circumstances of the making of the photographs, what they show, and when they were distributed to the public is not established.

.   Exhibit DR-4 is said to be a copy of a "Customer Information Sheet" printed for and distributed by Tubemakers.  Although Ryan states that this sheet was distributed to users of metal sections, there is no evidence by Ryan that he has personal knowledge of those facts, nor is there any evidence establishing if and when the sheet was publicly distributed.  It is submitted this exhibit is inadmissible evidence.

Mr Quahe also discussed the content of the exhibits with regard to issues of newness and originality of the designs in question.  He also referred to the relevant law.  I will refer to relevant points later where necessary.

DECISION

It was strongly submitted on behalf of the Miltons that the evidence filed by the informant was inadmissible in these proceedings or otherwise should be given little weight.  Mr Quahe submitted that the law of evidence required that only reliable and relevant material could be used in decided whether to extend the design registrations.  I need to first consider this issue.  I observe that the issue of the admissibility of the evidence was not raised in the comments by Griffith Hack & Co on behalf of the Miltons and was not an issue covered in the acting Deputy Registrar's opinion.

In this matter the Registrar is acting as a Tribunal.  Concerning tribunals, it was said by Lord Denning M.R. in T.A. Miller Ltd. v. The Minister for Housing and Local Government and Another (1968) 1 WLR 992 that a tribunal (of this kind) is master of its own procedure provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it would not be evidence in a court of law.

Similarly, Deane J., sitting in the Federal Court of Australia, issued a judgement including the following paragraph:

"These technical rules of evidence, however, form no part of the rules of natural justice.  The requirement that a person exercising quasi‑judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non‑existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant."

(See Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666.)

Accordingly the Registrar is entitled to act on any material which is "logically probative" of the issues under decision.  In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see eg. Dunlop Holdings Ltd's Application 1979 RPC 523).

Turning to the evidence, I agree with Mr Quahe that as Ryan gives insufficient detail of his work experience, his evidence as to common practice in the fencing industry and the construction of gates is of little weight.  I have the same conclusion about the evidence of Greatrix and Krix on the same issue.  Even though Krix says he "was involved in the design and manufacture of fence panels and gate frames" he provides no evidence to support his opinions about common practice nor does he say he designed and manufactured gate frames with the horizontal and vertical rails of the same section.  In fact no material provided by the informant apart from the statements of the declarants themselves tends to confirm the stated common practice that the horizontal and vertical rails of a gate frame are formed of the same section.  This includes the material of Exhibit DR-3 to which Mr Quahe raised other objections.   Thus, in the absence of other material, the evidence of the declarants about common practice is of low probative value.

With regard to Exhibit DR-2, the "certificate" presented to Finedesign, there is no indication of what use Finedesign may have made of steel tubing to warrant the award.  It is not clear whether the certificate recognised the use of the tubing section of design 109908, and if so, in what applications.  I note that nothing in the informant's evidence explains the business of the entity Finedesign.  I find that this exhibit does not provide any evidence of relevance to the issues in this matter.

Exhibit DR-3 is the so-called promotional material from Finedesign.  About this exhibit Ryan says:

"Attached hereto and marked exhibit DR-3 are copies of promotional material produced by Finedesign and relating to use of the section illustrated in exhibit DR-1. This promotional material was produced and distributed prior to October 1993."

There is nothing to corroborate Ryan's statements regarding this material, particularly as to when this material may have been made publicly available.  There is no indication on the material itself to identify the origin of the material, the manufacturer of the fencing units shown in the photographs, or to establish a publication date.  I find that this exhibit does not provide any evidence of relevance to the issues in this matter.

Exhibit DR-4 is the "Customer Information Sheet" produced by a division of Tubemakers.  I agree with Mr Quahe that there is no evidence establishing the first publication and public distribution of this sheet.  As Ryan says this sheet was distributed by the informant, presumably Tubemakers ought to have been in possession of information to establish details of the publication and distribution of the sheet, but none have been provided.  Nothing on the sheet itself suggests a possible publication date.  Thus, like the previous exhibits, I also find that this exhibit provides no evidence of relevance in this matter.

I turn now to consider whether each design was, at the priority date, new or original. If I find in the negative, then I must refuse the application to extend the period of registration (see s.27A(9)). In considering whether a design is new or original, the provisions of section 17(1) are of relevance, namely:

"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."

In view of my findings on the relevance of portions of the evidence filed by the informant, the only published material which I am able to consider is Exhibit DR-1.  This relates to design registration 109908 to the informant, Tubemakers, for a tubular section of indefinite length.  The present designs are not for a tubular section but for the shape and configuration of gate frames.  Thus the publication of design registration 109908 does not cause the present designs to lack newness. 

The informant raised arguments about the newness of the designs based on the alleged common practice to form the horizontal and vertical rails of a gate frame of the same section.  I have said that the declarants' evidence on this common practice point is of low probative value.  However at the hearing Mr Quahe for the Miltons said that reliance was placed on the comments previously provided by Griffith Hack & Co.  In those comments I note that the contents of the Krix and the Greatrex declarations were "not disputed", and the following general comments were made:

"In each of the KRIX, GREATREX and RYAN declarations, statements are provided to the effect that it was common practice prior to 5 October 1993 to manufacture gate frames with horizontal and vertical rails of the same metal section.  While we do not dispute the technical accuracy of the statements, we make the following comments and observations:

(1)Nowhere in any of the declarations is it stated that it is common practice to manufacture gate frames so that the horizontal and vertical rails are of the same curved or arcuate section."

These comments imply some support for the informant's claim about common practice in making gate frames with horizontal and vertical rails of the same metal section although that support does not seem to extend to the situations involving the use of curved or arcuate sections.

It appears that a tubular section having an appearance which accords with design 109908 is employed in creating the present designs applicable to gate frames.  Mr Turner submitted that the Miltons have merely employed the Tubemaker section and using trade variance applied that section to the configuration of known gates.  The trade variance relied on was the use of the same tubular section on all the horizontal and vertical rails of a gate frame.  This argument was predicated on the ground that the tubular section of design 109908 had been promoted to the public and the industry before the priority date for use in fences and gates.  However, in view of my findings about certain evidence, it has not been established that before the priority date the section in question had been known and used in the industry for fences and gates.  Thus it is not open to me to consider any lack of newness of the present designs merely because those designs appear to use the particular tubular section of design 109908.

Even had the tubular section of design 109908 been known and used in the industry before the priority date, I do not believe that there has been evidence provided to conclude that the present designs would inevitably have occurred to the average designer without the exercise of some individual creative activity.  It seems to me that to arrive at the designs it would have required the designer to elect to provide individually straight horizontal and vertical rails for the gate frame, use the tubular section on all horizontal and vertical rails, orientate the tubular section in a particular manner common to all rails, and provide mitre corner joints, most of which aspects are not covered in the evidence of the informant.  The designs involve a particular combination of features and it is recognised that a design composed of a combination of old or existing features can still be new or original even though the individual features are old - see Australian Building Industries Pty Ltd v. Woodman McDonald (Glass) Pty Ltd (1986) AIPC 90-302. Without appropriate evidence it is unsound to conclude that the designs could have resulted from creative activity not exceeding the average skill of a designer in the industry.

In summary, on the material before me, I am not satisfied that  design 118785 and design 118786 are lacking in newness or originality.  I therefore extend the period of registration for design 118785 and design 118786.

On the question of costs, in line with the usual practice that costs follow the event, I award costs in accordance with Schedule 4 of the Designs Regulations against Tubemakers of Australia Limited.

Trevor Bruhn
Delegate of the Registrar of Designs

.......

Solicitors for the registered owner:   Jackson McDonald, Perth

Patent Attorneys for the informant :   Spruson & Ferguson, Sydney