Sportservice Pty Ltd - [2007] ADO 6

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Design 304230 in the name of Sportservice Pty Ltd, and examination.

Delegate: Dave Herald

Representation: Mr M Woods, of the applicant

Decision: Objection in examination. The citation was ambiguous in respect of one integer. While the representations accurately represented the product, an important element in the design appeared more prominent in the actual product than suggested by the representations alone. Not satisfied that a ground of revocation has been made out. Examination taken to have been completed.
Background

Design 304230 relates to a bicycle transport rack for attachment to the rear of a car. The basic structure is a vertical pole (typically rising about 1m in height), bent over at 90 degrees at the top to provide a horizontal section upon which bicycles are clamped. The innovation that has led to the design application was the ability to split the vertical section half-way up. This allows for separation of the top part, leading (inter alia) to more compact stowage of the rack (especially in the luggage compartment of a car), easier opening of the rear door of a car having a rear hatch door, and ability to orient the top part over the luggage compartment of a sedan car when supporting small children’s bicycles.
In fact, the material located by the examiner indicates a number of prior art products that allow for the rack to be split. But in these products the joint is effected by reducing the diameter of one part of the tube so that it fits inside the normal diameter of the other tube. In the present case the joint is effected by expanding the diameter of one part of the tube, so that the other (normal diameter) part of the tube fits inside. This gives rise to an expanded ‘collar’ section – a bit like the clitellum on an earth worm.
The following are the principal representations of the design.
During examination the examiner cited a number of bicycle racks, and asserted that the design was not distinctive over the prior art. In particular, the examiner argued that the only difference of any significance was the appearance of the connecting section – and that this feature would not affect the overall impression of the rack.
At the end of the 6-month period for completion of examination, the owner requested to be heard. The hearing was held in Melbourne on 17 Sep 2007. While the prosecution of the design was handled by a registered patent attorney, Mr Mike Woods (the author of the design) appeared in person.
Having heard Mr Woods, and considered the design and the citations, I have come to the view that examination of this design should be taken as completed. That is, the procedure under s.67 should now take place, leading to a certificate of examination issuing. However there are a number of issues of general significance in the circumstances of this case, and it is therefore appropriate that I briefly…

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 Sportservice Pty Ltd

Details

AGLC: Sportservice Pty Ltd [2007] ADO 6
Case: [2007] ADO 6
Decision Date: 10 October 2007

CaseChat Overview and Summary

Sportservice Pty Ltd sought to register a design for a bicycle transport rack for attachment to the rear of a car. The design's novelty lies in its ability to split the vertical pole half-way up, allowing for easier storage and handling. During examination, an objection was raised by the examiner, arguing that the design lacked distinctiveness over prior art due to the prominent appearance of the connecting section. The applicant, Mr. Mike Woods, contested the objection and requested a hearing. The dispute centered on whether the design was sufficiently distinctive and novel over existing products.

The court had to determine if the design was distinctive enough over the prior art, considering the significance of the collar section and the overall impression created by the design. A critical issue was whether the representations accurately depicted the actual product and whether the collar section's prominence in the real product differed from its depiction in the representations. The court also needed to resolve uncertainties about the cross-sectional shape of the tube in the cited prior art product, which could impact the visual assessment.

The court found that the representations accurately depicted the actual product, although the collar section appeared more prominent in reality than in the drawings. The design's distinctiveness was influenced by the visibility of the collar section, which created a noticeable impact on the overall impression of the product. The court was unable to determine if the cited prior art was based on round or square tubing, adding to the uncertainty about the visual comparison. Consequently, the court concluded that the design was distinctive enough to overcome the examiner's objection, and examination of the design should proceed.

The court ordered that the examination of the design should be taken as completed, and the procedures under section 67 of the Designs Act 2003 should now apply, leading to the issuance of a certificate of examination. This decision allowed Sportservice Pty Ltd to proceed with the registration of their design for the bicycle transport rack.

Orders