Speedo International Limited v Ying Fa - [2010] APO 3

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 2005248944 in the name of Speedo International Limited

Title: Articles of Clothing

Action: Opposition under section 59 by Ying Fa and a request by the opponent for Security of Costs under section 219

Decision: Issued 9 February 2010 .
Abstract

Opponent’s request for security of costs is refused.

As a statutory position, the Commissioner is part of the Executive arm of Government. The powers are administrative in nature and limited by the specific confines of legislation.

The only legislative power the Commissioner has to order security of costs is under the Patents Act (Section 219). However this provision only allows the Commissioner to order a security of costs from an opponent not from the patent applicant. As the Commissioner has no power to require a security of costs from the applicant, I formally refuse the opponent’s request.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Patent Application No. 2005248944 by Speedo International Limited, opposition thereto under section 59 by Ying Fa and a request by the opponent for security of costs under section 219

BACKGROUND

Patent application 2005248944 was filed on 23 December 2005 in the name of Speedo International Limited as a divisional application of 72340/00. The parent application had been filed on 18 December 2000 claiming priority from a UK basic application (9929867) filed on 17 December 1999. The parent lapsed under section 142(2)(e) for failure to gain acceptance within the period prescribed by the regulations.

The Divisional application was advertised accepted on 12 February 2009 and a Notice of Opposition was filed by Ying Fa on 12 May 2009. The opponent served their Statement of Grounds and Particulars (SGP) on 12 August 2009 followed by their evidence in support on 19 November 2009. Evidence in answer was therefore initially due on 19 February 2010.

The opponent requested the Commissioner order a security of costs from the applicant (in a letter dated 17 November 2009). The opponent argued that in court proceedings, where an applicant is normally resident outside of Australia and has no assets in the jurisdiction, there must be a weighty reason why an order for security of costs should not be made.[1] The opponent requested that the Commissioner follow court practice and award an initial Security of Costs from the applicant (or their patent attorneys) of $30 000 to be “topped up” later as the matter proceeded.
[1] citing Cheny X Shipyard v the Ship “Falcon Trident” [2006] FCA 759 at [9], Gujarat NRE Australia Pty Ltd v Williams [2006] NSW SC 992 at [27], Shackles and Darcy Fish Supplies Pty Ltd v Broken Hill Propriety Co Ltd (1996) 2 UR 427 and Equity Access Ltd v Westpac Banking Corporation [1989] ATPR 40-972.

The applicant argued that the Commissioner had no power to order security of costs from an applicant because section 219[2] of the Patents Act 1990 was limited to requiring…

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.

Keep reading for free

Create a free CaseChat account to read Speedo International Limited v Ying Fa and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2010] APO 3
Decision Date: 9 February 2010

CaseChat Overview and Summary

In the case of Speedo International Limited v Ying Fa, the dispute involved an opposition to a patent application filed by Speedo International Limited. Ying Fa opposed the grant of a patent and requested that the Commissioner of Patents order security of costs from Speedo International Limited. The Commissioner was required to decide whether there was statutory authority to order such security from the patent applicant. The Commissioner concluded that the statutory power to order security of costs only applied to opponents and not to patent applicants, and thus the request was refused. The Commissioner's power is administrative in nature and limited by the specific confines of legislation, which does not grant the Commissioner the power to require a security of costs from the patent applicant. The Commissioner noted that while section 1335(1) of the Corporations Act 2001 allows a court to require security of costs from an impecunious corporate plaintiff, this provision does not apply to the Commissioner of Patents as it is not a judicial body.

The Commissioner examined the relevant statutory provisions and determined that the request for security of costs from the patent applicant was not supported by the applicable legislation. The Commissioner concluded that the statutory power to order security of costs only applied to opponents and not to patent applicants. Therefore, the Commissioner formally refused Ying Fa's request for security of costs from Speedo International Limited. The Commissioner also noted that in matters before the Commissioner, costs generally follow the event and that there were no costs that would have been incurred under the applicable schedule. Hence, it was not necessary to award costs in this matter.

Orders