Request for examination of design number 202211672 in the name of Fox Australia Pty Ltd
[2024] ADO 2
•17 July 2024
DESIGNSACT2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination of design number 202211672 in the name of Fox Australia Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Owner: Davies Collison Cave Pty Ltd |
| Decision: | 2024 ADO 2 Designs Act 2003 (Cth) – request for examination under s 63 – s 18 considered and applied – design new and distinctive over the prior art base – certificate of examination to issue |
Background
Fox Australia Pty Ltd (‘Owner’) is the owner of the following Australian design registration (‘Design’):
Design number: 202211672 (‘Application’) Product name: Curved real estate advertising board Filing date: 23 March 2022
Representation:
The Owner requested examination of the Design and an adverse report raising grounds for revocation issued to it on 13 May 2022. The report asserted that the Design was identical or substantially similar in overall impression to several designs in the prior art base.
In response, the Owner filed submissions and a declaration by Martin Fox, founder and director of Whitefox Real Estate Pty Ltd, made on 26 October 2022 (‘Fox 1’). The submissions emphasised the significance of smaller differences between competing designs because the ‘prior art base for signage boards is crowded and well developed’.1 In the Owner’s view, the Design ‘provides a visual impression approximating that of a colonial rounded arch window’ and this differentiates it from the designs in the prior art base.2
According to Fox 1, the Design ‘is associated with Whitefox’s “Window to your Home” real estate sign board’.3 Mr Fox ‘commissioned a pair of prototype arch-shaped real estate sign boards to be fabricated’ based on a drawing he created.4 Mr Fox ‘uploaded a photograph of the prototype boards to various social media platforms’ on 7 February 2022 and confirms this is the photograph published in the prior art base.5 The photograph was taken at a private premise and ‘[a]s of the filing date of 23 March 2022, fewer than 50 units’ of the signage board had been produced.6 In this context, the Owner submitted that the two designs advanced as being identical to the Design should be excluded from the prior art base pursuant to s 18 of the Designs Act 2003 (Cth) (‘Act’).
On 11 November 2022, a second adverse report issued to the Owner asserting that s 18 of the Act was not enlivened because Fox 1 was insufficiently particularised and unsupported by evidence. The two allegedly identical designs were thus maintained as grounds for revocation of the registration of the Design. The examiner withdrew the remaining designs identified in the first adverse report and raised four additional designs as grounds for revocation based on a lack of distinctiveness.
1 ‘Response to Examination Report’ dated 26 October 2022, 2.
2 Ibid.
3 Fox 1, [2].
4 Ibid [3].
5 Ibid [4].
6 Ibid [5].
The Owner replied with further submissions and evidence. The submissions claimed that the absence of ‘feet elements’ in the prior art designs was important because these contribute to the ‘function and visual effect communicated’ by the signage board.7 In the Owner’s opinion, the designs identified in the second adverse report did not constitute valid grounds for revocation. Meanwhile, the evidence filed consisted of a declaration made on 9 December 2022 by Mr Fox with annexures (‘Fox 2’) and a declaration made on 1 December 2022 by James Hallahan, real estate agent, with an annexure (‘Hallahan Declaration’).
According to Fox 2, an artwork created by Mr Fox was used as the basis for the prototype boards shown in the designs identified in the first adverse report. Mr Fox sent this artwork to Briner Ads Pty Ltd (‘Briner’) on 28 December 2021 who subsequently produced the prototype boards.8 Mr Fox declares that the ‘prototype boards were not used during any marketing campaign’ and the ‘artwork printed on the [prototype] boards was based on that used in a sales campaign for a [Blairgowrie] property that my Real Estate agency was selling’.9 Fox 2 confirms that, as at 23 March 2022, only two prototype boards had been produced. The Hallahan Declaration affirms that ‘no [prototype] boards were ordered or used for the marketing campaign’ of the Blairgowrie property.10
A third adverse report issued to the Owner on 24 January 2023 which maintained the following designs as grounds for revocation (collectively ‘Citations’):
7 ‘Response to Examination Report’ dated 15 December 2022, 1.
8 Fox 2, [5].
9 Ibid [7].
10 Hallahan Declaration, [3].
| Citation 1 |
| Citation 2 |
| Citation 3 |
The examiner maintained that Citation 1 was substantially similar in overall impression to the Design noting the variance in the leg positioning of each board did not ‘outweigh the
strong and overwhelming visual similarity between the designs’.11 As regards to Citations 2 and 3, the examiner was not satisfied that either could be excluded by reason of s 18 of the Act because the relevant artistic work had not been provided. Nor had adequate particulars been disclosed concerning the number of prototypes produced.
The Owner responded with submissions pointing out that the relevant artistic work was the ‘render’ of the Whitefox real estate advertising board. Namely, the ‘artistic work authored by Mr Fox’ that was supplied to Briner on 28 December 2021.12 The Owner maintained that the Design had not been ‘applied industrially’ and Citations 2 and 3 should be excluded on this basis. The Owner also disputed that Citation 1 was substantially similar in overall impression to the Design. A copy of the ‘render’ is reproduced below (‘Render’):13
A fourth adverse report issued on 17 February 2023 maintaining the Citations as grounds for revocation. The examiner emphasised the probable industrial application of the Design with attention being drawn to the fact that ‘applied industrially’ is not an exhaustive definition. In the examiner’s opinion, the public use of the prototype boards
11 Design examination report No 3 dated 24 January 2023, 2.
12 ‘Response to Examination Report’ dated 30 January 2023, 2.
13 A zoomed in view of the Render is reproduced at Annexure A to this decision.
revealed an intent to industrially exploit the Design. Hence, Citations 2 and 3 were maintained as grounds for revocation. The non-distinctiveness of the Design was likewise maintained in view of Citation 1. At this point, the Owner exercised its right to be heard.
A hearing was scheduled and the Owner was invited to file further submissions and/or evidence prior to the hearing. The Owner filed written submissions (‘Submissions’) together with a declaration by Con Tsakonas, Managing Director of Briner, made on 28 June 2023 with Exhibits CT-1 to CT-3 (‘Tsakonas Declaration’).
As a delegate of the Registrar of Designs (‘Registrar’), I heard this matter by video conference on 17 April 2024. Jack Shan and Ben Dziekan, both of Davies Collison Cave Pty Ltd, presented oral submissions on behalf of the Owner.
Legislative framework
Pursuant to s 63(1) of the Act, a design that has at any time been a registered design must be examined if any person requests, or a court orders, the Registrar to do so. Examination of a design requires the Registrar to consider whether the registration of a design should be revoked because, inter alia, it is not a ‘registrable design’.14
A ‘registrable design’ is a design that is ‘new’ and ‘distinctive’ when compared with the prior art base for the design as it existed before the priority date of the design.15 Here, the Design has a priority date of 23 March 2022 (‘Priority Date’) and the prior art base relevantly includes designs published in a document within or outside Australia.16
Section 16 of the Act defines what constitutes a ‘new’ and ‘distinctive’ design. Relevantly, it provides:
Designs that are identical or substantially similar in overall impression
(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).
14 Act s 65(2)(a).
15 Ibid s 15(1).
16 Ibid s 15(2)(b).
It is well established that a design is ‘new’ unless it is an exact copy of a design that forms part of the prior art base. The absence of a single visual feature, irrespective of its significance, in either of the relevant designs will thus be sufficient to establish that a design is ‘new’.17
Assessing whether a design is ‘distinctive’ requires a holistic consideration of the factors prescribed in s 19 of the Act which relevantly provides:18
Factors to be considered in assessing substantial similarity in overall impression
(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2)The person must also:
(a)have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i)have particular regard to those features; and
(ii) if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d)have regard to the freedom of the creator of the design to innovate.
(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).
Evidence
Mr Tsakonas has been with Briner for over 30 years and describes it as ‘a commercial signage fabricator that has been serving the Victorian real estate market since 1945’.19 Briner ‘design, produce and install over 30,000 real estate signage boards per year’ and, in his experience, ‘the majority of signage boards used in the Melbourne real estate
17 See, eg, World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114, [60] (Jessup J).
18 The application for the Design was filed after 11 September 2021. As such, the amendments to s 19(4) of the Act brought about by the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) sch 7 pt 1 apply.
19 Tsakonas Declaration, [4].
market’ are a standardised rectangular shape.20 Mr Tsakonas states that ‘a curved panel is unique and it requires significant work and effort to manufacture a real estate board in this manner’.21 He believes that a person familiar with the real estate industry would ‘readily identify any “non-standard” shaped real estate board from a first impression alone’.22
It is declared that Mr Fox approached Briner ‘with the idea of a “curved” or “arched” real estate board in 2021’.23 Initially, Mr Tsakonas had reservations over the design’s feasibility. Nevertheless, Briner produced ‘a pair of prototypes based on [Mr Fox’s] design’.24 These prototypes provided ‘an indication of the scale of the boards’ as well as a way to ‘trial different methods of attaching the printed vinyl “skin” to the arched panel’.25 Mr Fox inspected and approved of the ‘bespoke hand-made boards’ at a property owned by Briner in February 2022.26
Briner subsequently refined the prototype boards and provided Mr Fox with a quote ‘for a minimum initial order of 100 boards’.27 This quote was accepted and Briner installed the first curved board at the ‘Beaumaris property in April 2022’.28 Mr Tsakonas also details the differences between floating and standing real estate boards. The former ‘have no visible legs and must be attached to a fence or wall’ whereas the latter ‘include visible legs or feet that take the weight of the board’.29 For installation purposes, Mr Tsakonas prefers standing real estate boards as these can be removed without the need to plug drilled holes or repaint surfaces.
Discussion
Citation 1
20 Ibid [5], [10].
21 Ibid [19].
22 Ibid [12].
23 Ibid [14].
24 Ibid [15].
25 Ibid.
26 Ibid.
27 Ibid [16].
28 Ibid.
29 Ibid [20].
Several reasons regarding why Citation 1 was not substantially similar in overall impression to the Design were advanced in the Submissions. The Owner’s primary position was that Citation 1 ‘does not have legs or feet all’ because it depicted an advertising board ‘rested against a wall or seated upon an easel like stand’.30 Alternatively, it claimed that the familiar person would differentiate the designs based on ‘relatively small, but material, differences – such as the spacing and arrangement of the feet’ in each design.31 In the Owner’s view, the familiar person’s attention would be drawn to this visual feature given its functional relevance.
In this instance, assessing the underlying merits of the Owner’s position is not required because Citation 1 falls at the first hurdle. I am not satisfied that Citation 1 was published in a document before the Priority Date. There is no information, explicit or otherwise, within the document or uniform resource locator provided which discloses the publication date of Citation 1. Nor has an internet archiving service been used to establish that Citation 1 was published before the Priority Date. In short, there is no evidence that the prior art base for the Design includes Citation 1. Accordingly, Citation 1 does not constitute a valid ground for revocation of the registration of the Design.
Citations 2 and 3
I am satisfied that Citations 2 and 3 form part of the prior art base for the Design. Each design was published in a document that is dated before the Priority Date. Aside from an observation that the Design showed a blank advertising board, the Owner did not dispute the resounding similarities between these designs. Instead, the Submissions focused on the operation of s 18 of the Act. Such an approach is pragmatic. For completeness, I have no hesitation in finding that the Design is substantially similar in overall impression to Citations 2 and 3.
Section 18 of the Act provides:
Certain designs not to be treated as other than new and distinctive
(1)This section applies if:
(a)copyright under the Copyright Act 1968 subsists in an artistic work; and
30 Submissions, [027].
31 Ibid [030].
(b) an application is made by, or with the consent of, the owner of that copyright for registration of a corresponding design.
(2) The design is not to be treated, for the purposes of this Act, as being other than new and distinctive, or as having been published, by reason only of any use previously made of the artistic work, unless:
(a) the previous use consisted of, or included, the sale, letting for hire or exposing for sale or hire of products to which the design had been applied industrially, other than products specified in regulations for the purposes of paragraph 43(1)(a); and
(b) the previous use was by, or with the consent of, the owner of the copyright in the artistic work.
Note: Certain uses of the design are disregarded: see subsection 17(1E).
(3)In this section:
applied industrially has the meaning given by regulations under section 77 of the
Copyright Act 1968.
At the outset, s 18(1) of the Act requires the Owner to identify a) the ‘artistic work’ in which copyright subsists and b) that the application for registration of a ‘corresponding design’ was made by, or with the consent of, the copyright owner. The terms ‘artistic work’ and ‘corresponding design’ have the same meaning as in the Copyright Act 1968 (Cth) (‘CA’).32 Under the CA, an ‘artistic work’ includes ‘a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not’ and a drawing is defined to include ‘a diagram, map, chart or plan’.33 Meanwhile, a ‘corresponding design’, in relation to an artistic work, ‘means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003’.34
The Owner contends that the Render is an artistic work. However, the Submissions do not engage with s 18(1) of the Act and simply proceed on the assumption that copyright subsists in the Render without, for example, identifying what type of artistic work it is. In my assessment, the Render is a drawing and there is nothing before me which suggests it has been copied from some other work. Mr Fox declares he authored the Render and there is evidence that it was supplied to the public in Australia since at least December 2022.35
32 Act s 5.
33 CA s 10(1).
34 Ibid s 74.
35 Fox 2, [4].
Consequently, it is more probable than not that the Render is an original artistic work in which copyright subsists.36
Turning to whether the Design is a corresponding design of the Render, I acknowledge that differences exist between the visual features of the advertising board shown in each representation. The most prominent being the print appearing on the board in the Render and the discrepancy in the positioning of each board’s feet. Be that as it may, I am satisfied that the Design is a corresponding design of the Render. First, the statutory definition of a corresponding design37 stipulates that only the visual features of shape or configuration are relevant for assessment purposes. It follows that the absence of other visual features, including ornamentation such as the print, is not fatal to establishing that the Design is a reproduction of the Render. Second, the CA provides that a reproduction of an artistic work includes a reproduction of a substantial part of that work.38 In this context, I consider the Design constitutes a reproduction of the Render notwithstanding the slightly different feet positioning. Lastly, the relevant visual features of the Render are plainly embodied in the advertising board insofar as the Design is three dimensional and made in the shape and configuration of the Render.39
For completeness, I note that the Submissions and evidence filed are silent regarding if Mr Fox, the owner of the copyright in the Render, consented to the Application being made by Whitefox Real Estate Pty Ltd.40 However, given Mr Fox’s position as the founder and director of this entity in combination with his continued involvement in the proceeding, I consider it reasonable that his consent to the making of the Application can be implied.
Accordingly, s 18(1) of the Act is satisfied. Pursuant to s 18(2) of the Act, it is necessary to consider if the Design had been ‘applied industrially’. This term is defined in the regulations made under s 77 of the CA. Specifically, reg 12 of the Copyright Regulations 2017 (Cth) (‘CR’) relevantly provides:
36 See, eg, CA s 32.
37 Which is reproduced at [26] of this decision.
38 CA s 14.
39 See, eg, Seafolly Pty Limited v Fewstone Pty Ltd [2014] FCA 321, [481]–[484] (Dodds-Streeton J).
40 Being the original applicant of the Application. The Application was subsequently transferred from the original applicant to the Owner in 2023 via a Deed of Assignment.
Circumstances in which design is taken to be applied industrially--section 77 of the Act
(1) For the purposes of section 77 of the Act, a design is taken to be applied industrially if it is applied:
(a)to more than 50 articles; or
(b) to one or more articles (other than hand - made articles) manufactured in lengths or pieces.
Regulation 12 of the CR is a deeming provision and it is possible for a design to be applied industrially even if it is applied to less than 50 articles.41 As such, whether industrial application will be taken to have occurred is largely dependent on the particular facts and circumstances of the matter.
In the present matter, the Owner accepts that two prototype boards had been manufactured before the Priority Date but asserts that ‘the Design had not been industrially applied at all, let alone offered for sale or lease’.42 The Owner claims that ‘the manufacture of a mere two boards for prototyping purposes’ is not an industrial application because each board required bespoke manufacture.43 Attention was drawn to the sheer number of advertising boards designed, produced and installed by Briner, which amounts to over 30,000 boards each year. In the Owner’s view, this reinforces that ‘there is simply no basis or merit to support a suggestion that the manufacture of a mere two boards for prototyping purposes’ represents industrial application’.44
The Owner’s position is inherently plausible. The side by side placement of two advertising boards with differing heights bearing the exact same print lends credence to the narrative put forward by Mr Fox and Mr Tsakonas. Namely, the prototypes were being feasibility tested at Briner’s premises and were not a public use of the advertising boards. I accept Mr Tsakonas’ evidence that the mass production of curved advertising boards would at least require a prototyping phase given, for example, the automated printing, handling and cutting machines would need reprogramming to adjust for the non- rectangular board shape. In my opinion, the mere uploading by Mr Fox of Citations 2 and 3 to social media is not, without more, an invitation to purchase or hire the prototype
41 See, eg, Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120, 126 (King J).
42 Submissions, [016].
43 Ibid [019] (emphasis in original).
44 Ibid [020].
advertising boards. Based on the evidence, I am not satisfied that the Design had been industrially applied at the Priority Date. To this end, I note the interlocutory matter of Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd wherein King J observed:
[the] evidence establishes, for present purposes, that on 7 March 1983 only three prototypes of the plaintiff’s helmets had been made and that no manufactured helmets were received by the plaintiff until after that date. On the face of it the making of prototypes is not the industrial application of a design …45
Accordingly, I am satisfied that Citations 2 and 3 should be excluded from the prior art base by reason of s 18 of the Act. It follows that the Design is not to be treated, for the purposes of the Act, as being other than new and distinctive.
Decision
I have found that no grounds for revocation exist. As such, examination of the Design has been completed and a certificate of examination may now issue for Australian design number 202211672.
Nicholas Barbey Hearing Officer
Delegate of the Registrar of Designs 17 July 2024
45 (1985) 4 IPR 120, 126 (emphasis added).
Annexure A
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