Richsell Pty Ltd v Khoury - [1994] FCA 972

RICHSELL PTY LTD v. DAVID KHOURY
No. QG197 of 1992
FED No. 972/94
Number of pages - 15
Designs
(1994) 30 IPR 129

COURT

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
KIEFEL J

CATCHWORDS

Designs - prior publication and use - secret use - onus of proof - whether design "new" or "original"

Designs Act ss.17(1), 17(1A), 26(3), 46A(a), 47

Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725 Refd
Fisher and Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 Refd
Dalgety Australia Operations Ltd v F Seeley Nominees Pty Ltd (1986) 10 FCR 403 Refd
Longworth v Emerton (1951) 83 CLR 539 Refd
Re Wolanski's Registered Design (1953) 88 CLR 278 Cons
J Rapee and Co Pty Ltd v Cas Cushions Pty Ltd and Anor (1989) 90 ALR 288 Refd
Re: Wingate's Design (1934) 52 RPC 126 Refd
CIG v MWA Holdings Pty Ltd (1970) 44 ALJR 385 Refd
Australian Gold Recovery Co Ltd v The Daydawn PC Gold Mining Co Ltd (1902) St R 123 Refd
Skedelski and Anor v Underwood and Anor (1990) IPR 161 Refd
Papersacks Pty Limited v Cowper (1936) 53 RPC 31 Refd
D Sebel and Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 Cons
Shimano Industrial Company Ltd v Silstar Australia Pty Ltd (1991) 20 IPR 451 Refd
Dunlop Holding Limited's Application (1979) RPC 523 Cons
Browne v Dunn (1894) 6 R 67(HL) Dist
Aspro-Nicholas Limited's Design Application (1974) RPC 645 Cons
British Franco Electric Pty Ltd and Anor v Dowling Plastics Pty Ltd (1981) 1 NSWLR 448 Refd
Dart Industries Inc and Anor v The Decor Corporation Pty Limited (1989) AIPC 90-569 Cons
Malleys Ltd v J W Tomlin Pty Ltd (1962) 35 ALJR 353 Cons

HEARING

BRISBANE, 8-10 November 1994
#DATE 8:12:1994

Counsel for the applicant: Mr A J Morris QC

and Mr A Musgrave

Solicitors for the applicant: Barwicks

Counsel for the respondents: Mr J Lee

Solicitors for the respondents: Goodfellow and Scott

ORDER

THE COURT ORDERS THAT:

1. The Register of Designs be rectified by expunging the entries of Registration of Design Nos. 115706, 115707 and 114964.

2. The hearing of the issue of damages raised on the counter-claim be adjourned to a date to be fixed by the Registrar.

3. The applicant's application be dismissed.

4. The applicant pay the respondent's costs of and incidental to the proceedings, to be taxed.

THE COURT DIRECTS THAT:

5. The matter be listed for further directions on a date to be fixed by the Registrar in February or March 1995.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

JUDGE1

KIEFEL J The applicant is the owner of three registered designs concerning a "lounge suite" marketed under the name "Sherwood". The registered designs numbered 115706 and 115707 and which apply, respectively, to a single-seated lounge chair and a double-seated lounge chair which make up the suite have…

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: [1994] FCA 972
Decision Date: 08 DECEMBER 1994

CaseChat Overview and Summary

Richsell Pty Ltd, the applicant, brought an action against Khoury, the respondent, in the Federal Court of Australia, challenging the registration of certain designs under the Designs Act 1906 (Cth). The applicant claimed that the designs in question had been in secret use prior to their registration by the respondent and thus were neither new nor original as required by the Act. This assertion was made in relation to three registered designs: Design Nos. 115706, 115707, and 114964.

The primary legal issues before the court were whether the designs were in secret use prior to their registration and if so, whether this constituted a bar to their registration under the Act. The court needed to determine the onus of proof in such cases and whether the applicant had successfully discharged this burden. Additionally, the court had to consider the respondent's counter-claim for damages for the applicant's alleged infringement of the registered designs.

In delivering the judgment, the court found that the onus of proof in establishing secret use lay with the applicant. After examining the evidence, the court concluded that the applicant had not discharged this onus. Therefore, the court held that the designs were new and original, and the registrations were valid. Consequently, the court ordered the expungement of the design registrations from the Register of Designs. The hearing on damages was adjourned, and the applicant's application was dismissed. The court also ordered the applicant to pay the respondent's costs of the proceedings. The matter was directed to be listed for further directions in early 1995.

Orders

Orders of the court

THE COURT ORDERS THAT:

1. The Register of Designs be rectified by expunging the entries of Registration of Design Nos. 115706, 115707 and 114964.

2. The hearing of the issue of damages raised on the counter-claim be adjourned to a date to be fixed by the Registrar.

3. The applicant's application be dismissed.

4. The applicant pay the respondent's costs of and incidental to the proceedings, to be taxed.

THE COURT DIRECTS THAT:

5. The matter be listed for further directions on a date to be fixed by the Registrar in February or March 1995.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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