Somfy SAS - [2011] ADO 4

DESIGNS ACT 2003

STATEMENT OF REASONS FOR A DECISION OF A

DELEGATE OF THE REGISTRAR OF DESIGNS
Re:Design application 12675/2008 - LCD SCREEN FOR REMOTE CONTROL- in the name of Somfy SAS .

Delegate: T. E. Williams

Representation: Applicant: written submissions by Pizzeys patent attorneys

Decision: 2011 ADO 4
S 39 and reg 4: Design is a product, and classifiable, thus able to be registered.
Background

Somfy SAS (“the applicant”) filed a design application and requested that the design be registered. The design application, 12675/2008, is in respect of a design as follows:
The applicant has recently amended the application so as to identify the product to which the design is applied as “LCD screen for remote control”[1]. The Statement of Newness and Distinctiveness was also amended, and now reads:
The newness and distinctiveness of the design resides in the features of pattern and/or ornamentation of the LCD screen.
[1] Prior to that amendment the product was “a display screen”.
A design cannot be registered unless it meets the formalities check provided for by section 39 or 40 of the Designs Act 2003 (“the Act”). Prior to the recent amendments, to which I have referred in paragraph 2, the application was the subject of a number of formalities notices which asserted that the design did not meet the requirements of the Designs Regulations 2004 (“the regulations”) and thus could not be registered. The applicant requested to be heard as to the registrability of the design and I was assigned to conduct the necessary hearing. However, on the basis of the written submissions put to me by the applicant’s attorney, together with the amendment, I was satisfied that registration was appropriate and directed that the design be registered. I set out now the reasons for that decision.
Discussion
The formalities officer has contended that:
(a)The product named in the application is an element of a product and not a product in its own right
(b)A display on a display screen is not a product within the meaning of the Act and, accordingly, this application does not disclose any “product” that can be classified in accordance with the Locarno Agreement. The formalities officer conceded that Locarno does have a classification that would, aside from this aspect, cover “display screens”. The officer noted that the Locarno Agreement is not prescriptive of what type of product may be registered under the Act. He also said that “the visual features are not of the product, rather they are projected onto the product”.
(c)This Office does not consider decisions of the United Kingdom relevant when interpreting the scope of the Act. This office relies on its own examination manual…
Dealing with those issues in order, (a) has been resolved because the amendment of the application makes it clear that an LCD display screen for a remote control does constitute a product. In terms of the definitions in s 5 of the Act, a remote control incorporating an LCD is a complex product. It can safely…

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 Somfy SAS

Details

AGLC: Somfy SAS [2011] ADO 4
Case: [2011] ADO 4
Decision Date: 31 May 2011

CaseChat Overview and Summary

The case involves Somfy SAS, an applicant seeking to register a design under the Designs Act 2003. The design pertains to an LCD screen for a remote control, with the application initially referring to a "display screen" before being amended to specify "LCD screen for remote control." The dispute arose from the applicant's attempt to register the design, with the formalities officer contending that the design did not meet the statutory requirements for registration. The central legal issues concerned whether the LCD screen was a product in its own right, whether the design was projected onto the product rather than being an inherent feature of it, and whether the Australian court should consider UK precedents in interpreting the Act.

The court resolved these issues by first addressing the contention that the LCD screen was merely an element of a larger product and not a product in its own right. The court found that an LCD screen for a remote control could be considered a product, given its distinct manufacturing process and its inclusion as a component of a complex product. The court also clarified that the Locarno Agreement, which classifies products for design registration, was not prescriptive about what types of products could be registered. Furthermore, the court noted that decisions from the United Kingdom were not binding and should not unduly influence the interpretation of the Australian Act. The court concluded that the design application sufficiently identified the product for classification purposes, satisfying the formalities check under regulation 4.04.

Ultimately, the court determined that the LCD screen constituted a product capable of bearing visual features, and thus the design could be registered. The court emphasized that the formalities check stage was not the appropriate time to address deeper issues about the nature of the product or its visual features, which would instead be considered during the examination stage. The court also noted that the Australian Law Reform Commission's recommendation against protecting screen displays did not necessarily apply to the specific context of an LCD screen for a remote control, as registration under the Act was a preliminary step rather than full protection against infringement.

In conclusion, the design was deemed registrable, and the court directed that the design be registered. The decision highlights the importance of distinguishing between the formalities check and examination stages in design registration proceedings, ensuring that the former focuses on basic eligibility criteria while leaving more complex issues for later stages.

Orders