New Horticulture Pty Ltd v Enviro Pak Pty Ltd - [2016] ADO 2

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Opposition by New Horticulture Pty Ltd to application for extension of time under section 137(2)(a) of the Designs Act 2003 in relation to Registered Design No. 304960 in the name of Enviro Pak Pty Ltd.

Delegate:	Heath Wilson
Representation:	Applicant: Written submissions from Allens Linklaters Opponent: No written submissions
Decision:	2016 ADO 2 Application for an extension of time under section 137(2)(a) of the Designs Act 2003 – whether error or omission – discretion to grant the extension not exercised – extension of time refused.

Background

This is an opposed application for an extension of time to request a hearing on the examination of Registered Design No. 304960 (‘the Design’) in the name of Enviro Pak Pty Ltd (‘the Owner’). It is the third application for an extension of time made for this purpose by the Owner and in this instance is made under section 137(2)(a) of the Designs Act 2003 (‘the Act’).
The Design has a lengthy and detailed history. I will therefore set out the major events that are likely to affect the ultimate outcome. Some of the background described hereunder will be elaborated on later in light of the evidence produced by the parties.
On 11 January 2006, a certificate of registration was issued to the Owner in relation to the Design. The initial five year registration period was renewed on 11 January 2011 under section 47 of the Act for a further five years. As a result, the ten year term of registration for the Design expired on 11 January 2016.
After the company New Horticulture Pty Ltd applied to the Registrar of Designs on 6 December 2012 for examination of the Design, it ultimately became the subject of court proceedings between the Owner and New Horticulture. On 25 June 2013, the Federal Court made interlocutory orders that the Registrar of Designs examine the Design.[1]
[1] See Enviro Pak Pty Ltd v New Horticulture Pty Ltd (No. 2) [2013] FCA 624 (25 June 2013).
On 10 September 2013, the first examination report issued with a deadline of 10 March 2014. A second report issued on 15 April. Due to an office delay, the period for the Owner to respond to the examination report was subsequently extended for a further two months.[2] Ultimately, the deadline became 12 May 2014 (as the 10 May fell on a Saturday)[3].
[2] See section 137(1) of the Act.
[3] See section 136A(2)(a) of the Act and Reg 11.33 of the Designs Regulations 2004 (‘the Regulations’)
On 12 May (under cover of a letter dated 10 May), the Owner informally applied[4] via email for an extension of time under section 137 of the Act seeking six months in which to address the grounds for revocation in the first report. On 3 July 2014, a delegate of the Registrar wrote a letter intending to refuse the extension of time and allowed until 24 July 2014 for the submission of…

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: [2016] ADO 2
Decision Date: 16 March 2016

CaseChat Overview and Summary

New Horticulture Pty Ltd opposed the third application for an extension of time to request a hearing on the examination of Registered Design No. 304960 in the name of Enviro Pak Pty Ltd, under section 137(2)(a) of the Designs Act 2003. The delegate of the Registrar of Designs, Heath Wilson, considered the application. The delegate refused to grant the extension of time. The delegate found that the Owner had made an error or omission which was causally linked to the failure to request a hearing before the Design ceased at law on 10 May 2014. However, the delegate found that extending the time for the purpose of hearing the examination of the Design would only serve to create further uncertainty. The delegate concluded that it was not appropriate to exercise the Registrar’s discretion and grant the extension of time. The delegate refused the application for an extension of time in relation to Registered Design no. 304960.

Orders