PI-Design AG - [2018] ADO 2

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Request for examination of design number 201515424 (registered design number 365096) in the name of PI-Design AG.

Delegate:	Adrian Richards
Representation:	Kate Andean of Banki Haddock Fiora
Decision:	2018 ADO 2 Examination of a design under section 63 of the Designs Act 2003 (Cth) – section 19 considered – design new and distinctive over the prior art base – examination certificate to issue

Background

On 14 October 2015, PI-Design AG (‘the Owner’) filed an application seeking registration of a design (‘the Design’) under the Designs Act 2003 (Cth) (‘the Act’). The Design was entered on the Register of Designs (‘the Register’) on 6 November 2015 with the following particulars:
Product name
A coffee maker
Design number
201515424
Registration number
365096
Statement of Newness and Distinctiveness
The visual features of the coffee maker depicted in the representations that are new and distinctive are the shape and/or configuration (‘the SND’)
Priority date
7 May 2015 (‘the Relevant Date’)
Representations
The Owner requested examination of the Design at the same time it filed its application for registration. Because of this, immediately after the Design was registered it was scheduled for examination. A first examination report was sent to the Owner on 6 January 2016, raising a single ground for revocation based on the Owner’s earlier Australian registered design (‘the Earlier Design’). Particulars of the Earlier Design relevant to this decision have been reproduced below:
Product name
A coffee maker
Design number
201514163
Registration number
363750
Registration date
24 August 2015
Priority date
12 March 2015
Representations
The Owner responded to the first examination report on 10 February 2016, drawing attention to the double walled areas visible in the Design, but this did not result in the ground for revocation being withdrawn. Instead, a second examination report issued on 10 March 2016, to which the Owner responded on 29 June 2016. Since the six month statutory deadline for the conclusion of examination was drawing near, the Owner filed a request for a hearing on 5 July 2016. The hearing request was able to be acted upon by this office once the payment of the relevant fee was made on 6 September 2016.[1]
[1] Designs Regulations 2004 (Cth) reg 11.07(2).
The examination was originally scheduled to be heard by me, a delegate of the Registrar of Designs, on 22 January 2018. However, on 20 December 2017 the Owner asked that the matter instead be decided on the papers. In response I vacated the hearing date and, in lieu of a hearing, set a deadline for the Owner to file any evidence or submissions by 22 January 2018. Kate Andean of Banki Haddock Fiora filed written submissions on behalf of the Owner on 22 January 2018, and so the matter was ready to be decided.

Examination of the Design

Section 65(1) of the Act states that the sole question to be answered when examining a design is whether a ground for revocation…

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.

Continue reading PI-Design AG

Details

AGLC: PI-Design AG [2018] ADO 2
Case: [2018] ADO 2
Decision Date: 21 February 2018

CaseChat Overview and Summary

PI-Design AG sought to have a design for a coffee maker registered under the Designs Act 2003 (Cth). The design was registered on 6 November 2015. The applicant requested examination of the design at the time of filing. The Registrar of Designs raised a ground for revocation based on an earlier design filed by the applicant, which was registered on 24 August 2015. The applicant opposed the revocation and requested a hearing, which was later decided on the papers. The central issue in this case was whether the design was new and distinctive over the prior art base, as required by the Designs Act 2003 (Cth). The court had to consider whether the design was substantially similar in overall impression to any design that formed part of the prior art base.

The court found that the design was new since it was not identical to the prior art. The main focus of the examination was whether the design was substantially similar in overall impression to the prior art. The court considered various factors, including the state of development of the prior art base, the amount, quality, and importance of the similarities, and the freedom of the creator of the design to innovate. The court concluded that, although there were many similarities between the design and the prior art, the double-walled feature of the design granted it a substantially different overall impression. Therefore, the design was distinctive and did not infringe on the prior art. The decision was that no grounds for revocation had been made out for the design, and an examination certificate should be issued.

The court issued an examination certificate for the design, confirming that it was new and distinctive over the prior art base. The design registration was therefore upheld, and the applicant's request for examination was successfully completed.

Orders