Sun-Wizard Holding Pty Ltd v Key Logic Pty Ltd - [2017] ADO 8

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
ReRequest for examination by Sun-Wizard Holding Pty Ltd of design number 201012310 (registered design number 332890) in the name of Key Logic Pty Ltd

Delegate: Robert Wilson
Representation: Owner: David Logan of Queens Counsel, instructed by Paul Davis of Fisher Adams Kelly Callinans Patent & Trade Mark Attorneys
Requestor: Susan Gatford of Counsel, instructed by Michelle Wilson of Wynnes Patent & Trade Mark Attorneys

Decision: 2017 ADO 8
Designs Act 2003 (Cth) – third party request for examination of a design under s 63 – whether email to a number of associates of owner confidential – design forms part of prior art base - registration to be revoked

Background
1. On 7 June 2010 (‘the Priority Date’) Exlites Pty Ltd (‘the Previous Owner’) filed an application under the Designs Act 2003 (Cth) (‘the Act’). The design number allocated to the sole design in the application was 201012310 (‘the Design’).
2. The Design was registered on 24 September 2010 and allocated registration number 332890. The product to which the Design relates is described as a ‘Solar bollard ’. It carries the following Statement of Newness and Distinctiveness (‘SOND’):
The entire design is new and distinctive.

3.     The following are the representations contained in the registration:
4.     On 14 October 2011 a request for examination of the Design was filed by the Previous Owner. An initial examination report issued on 29 November 2011 indicated that the examiner considered grounds for revocation of the Design existed on the basis that the design was not new and distinctive. Following a response from the Previous Owner a second examiner was satisfied that the Design was is fact new and distinctive and that no grounds for revocation existed. The Design was certified on 13 January 2012.
5.     On 14 July 2014 the registration was updated to reflect an assignment of ownership of the design from the Previous Owner to Key Logic Pty Ltd (‘the Owner’).
6.     On 16 February 2015 a third party, Sun-Wizard Holding Pty Ltd (‘the Requestor’), requested examination as permitted under s 63 of the Act. The request asserted that the Design was not new and distinctive and was accompanied by material to support this view. The Design was examined again and notice was issued to the parties indicating that no ground of revocation existed. The notice provided the Requestor an opportunity to be heard. On 7 July 2015 the Requestor availed itself of this opportunity.
Evidence
7.     On 18 April 2016 directions were made which provided the parties an opportunity to provide evidence. The Requestor filed the following evidence:
·Statutory Declaration made on 17 June 2016 by Ian Fry, a director of the Requestor, with Exhibits IF-1 to IF-8 (‘Fry 1’);
·Statutory Declaration made on 17 June 2016 by Earl Andrew Palfrey, owner and manager of All Round Supplies Pty Ltd, with…

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: [2017] ADO 8
Decision Date: 17 October 2017

CaseChat Overview and Summary

The matter before the delegate of the Registrar of Designs was a third-party request for examination of a design under section 63 of the Designs Act 2003 (Cth). The request was made by Sun-Wizard Holding Pty Ltd (the Requestor) in relation to design number 201012310 (the Design), which was registered in the name of Key Logic Pty Ltd (the Owner). The Requestor asserted that the Design was not new and distinctive and was accompanied by material to support this view. The Owner opposed the request, asserting that the Design was new and distinctive and constituted a registrable design. The legal issues that the court was required to decide were whether the images of the design in question were published and therefore part of the prior art base for the design, and if so, whether the design was new and distinctive when compared with the prior art base. The court found that the images of the design in question were published and therefore part of the prior art base for the design. The court found that the second email was not imparted in circumstances importing an obligation of confidence and therefore the images in the attachments to the emails constitute publication of the design. As a result, the images in the attachments to the emails constitute part of the prior art base and disclose the design. Since the publication occurred before the priority date, the design is not new and distinctive when compared to the prior art base, and consequently is not a registrable design. A ground for revocation of the design therefore exists. The final orders made were that Registration Number 332890 be revoked one month from the date of the decision and that costs be awarded to the Requestor.

Orders