Removerite Incorporated - [2013] ADO 7

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration Nos. 335711 and 335712 in the name of Removerite Incorporated – and – examination thereof.

Delegate: Debrett Lyons

Representation: Owner : Andrew Cale of Fisher Adams Kelly, Patent & Trade Mark Attorneys

Decision: 2013 ADO 7
Sec. 63 examination: subject designs found to be distinctive over prior art base. Examination completed and registrations to be certified.
Background

On 10 February 2011, Removerite Incorporated (“the Owner”) filed an application for design registration of the Designs Act 2003 (“Act”), containing two designs, referred hereinafter as Design A and Design B (together, “the Designs”).
On 31 March 2011, Design A was registered as number 335711 and Design B as 335712 (“the Registrations”).
On 5 April, the Designs were the subject of a request for examination by the Owner.
Examination raised grounds for revocation of the Designs which were maintained through several official reports and in consequence of which the Owner asked to be heard.
The matter came before me, Debrett Lyons, a delegate of the Registrar of Designs for a hearing in Canberra on 6 May 2013. The Owner was represented by Mr Andrew Cale of Fisher Adams Kelly, Patent & Trade Mark Attorneys who attended the hearing via telephone.
Mr Cale made both written and oral submissions. As a result of discussion of the relevant issues at the hearing the Owner was allowed further time to produce evidence from an informed user. That evidence was not forthcoming and so this decision is based solely on the aforementioned submissions.
Examination and Prior Disclosure
Examination requires the Office to have regard to section 65(2)(a) of the Designs Act 2003 (“Act”) which creates a ground for revocation of a registration if the "design is not a registrable design".Section 15(1) states that a design is registrable if it is new and distinctive compared to the prior art base.
Relevant views of Design A and Design B are shown in Appendices A and B respectively.
Examination identified a ground for revocation based on prior art being an earlier US Design Patent No. D585,731 published 3 February 2009 belonging to the Owner (“the Prior Disclosure”) and shown in Appendix C. The Examiner alleged that the Designs are not new and distinctive because they are substantially similar in overall impression to the Prior Disclosure.
Legal framework and Submissions
Newness and distinctiveness are separate requirements. At the commencement of the hearing I made it plain to the Owner’s representative that if there were any ambiguities in what the Examiner might have said, I did not consider that the Designs were anything other than new.
The only live issue is distinctiveness and in that respect section 19 of the Act gives an initial instruction to the person making the decision to give more weight to similarities between the designs than to differences between them. Section 19(2) sets out the factors to be considered in assessing substantial similarity in overall impression, as follows:
19(2) The person…

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 Removerite Incorporated

Details

AGLC: Removerite Incorporated [2013] ADO 7
Case: [2013] ADO 7
Decision Date: 4 October 2013

CaseChat Overview and Summary

Removerite Incorporated filed an application for design registration under the Designs Act 2003, seeking registration of two screw designs. After initial registration, the designs were subject to examination, leading to a request for a hearing to contest the grounds for revocation. The primary issue was whether the designs were distinctive over the prior art, specifically an earlier US design patent belonging to the same owner. The Owner argued that the designs were distinctive due to their functional features, such as the thickness of the flanges and the taper of the shanks, which were not present in the prior art.

The court considered the distinctiveness of the designs under section 19 of the Designs Act 2003, which mandates that more weight be given to similarities than differences. The court also examined the state of the prior art base, the importance of the differing features, and the freedom of the designer to innovate. The Owner’s submissions highlighted the mature nature of the screw design field, suggesting that even minor differences could be sufficient for distinctiveness. The Owner further argued that informed users would recognize the functional importance of the flanges and shanks, leading them to view the designs as distinctive.

The court concluded that despite the similarities between the designs, the distinctive features of the flanges and shanks were significant enough to differentiate the designs from the prior art. The court found that an informed user, such as a builder, would recognize these features as important for the functionality of the screws. Consequently, the court found that the designs were not substantially similar to the prior art in overall impression and decided not to revoke the registrations. The registrations were to be certified as per section 68 of the Act.

Orders