Tidy Chain Pty Ltd v Alan Marcel Cook

[1989] APO 15

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 572712 in the Name of TIDY CHAIN PTY. LTD.

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In the Matter of Opposition thereto under Section 59 by ALAN MARCEL COOK.

DECISION OF AN ACTING SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 50871/85 was lodged on 6 December 1985 by HUGH LESTER MITCHELL and RAYMOND ALLEN SMALL for a patent for an invention entitled "Article Storage and Display Device".  The application was a Complete‑After‑Provisional application with a priority date of 6 December 1984.  Pursuant to a request made under section 34(4)(a), the Commissioner directed that the application was to proceed in the name of TIDY CHAIN PTY. LTD.   The application was advertised as accepted on 12 May 1988 and given the serial No. 572712.  A notice of opposition was lodged on 11 August 1988 by ALAN MARCEL COOK; the grounds of opposition being those specified in all paragraphs of sub‑section 59(1).  A hearing had been set down for 3 March 1989 but both parties chose not to attend.  The applicant, who did not lodge any evidence‑in‑answer, made written submissions in lieu of the hearing.
Specification
         The specification indicates that the invention relates to a device which can be used for the storage and/or display of articles

such as toys, clothing, tools, footwear, piece goods and the like.  The device can be used in shop window displays, building foyers and in any suitable location in domestic, commercial or industrial situations.  Claim 1 reads as follows:

"A storage or display device comprising, in combination, a plurality of interconnecting link means to form a chain having one or more strands, suspending means for suspending the chain from a support whereby the chain hangs freely substantially vertically, and a plurality of releasable fastener means connected through a plurality of spaced link means of the chain and carried thereby said releasable fastener means including gripping means to grip articles for support by the suspended chain."

Claim 2 specifies that the chain links are formed of synthetic plastic material, claim 3 relates to specific details of the releasable fastener means and claim 4 is an omnibus claim.
Evidence
         A declaration dated 11 August 1988 by Robyn Lesley Clarke states that from December 1983 to July 1986 she and her husband were the owners of a newsagency in Sydney and that "during that time" the business was supplied with soft toy hangers and hooks from the said Mr Cook.  She referred to a "clip part [which] permits articles to be attached" to a long chain made of plastic links.  Attached as an annex to the declaration are four photographs and an explanatory sheet.  The photographs show four views of merchandise on sale in Clarke's newsagency; some photographs show, at a distance, a toy display where the toys appear to be attached to white chains and some photographs show an advertisement, on the wall of a counter, for a magazine entitled Bazaar.  Included with the evidence is a photocopy of the front page of a Bazaar magazine which, being characterized by a female model, appears to be identical to the advertisement in the photograph.  The photocopy shows the magazine to be an edition dated September 1984, "the first Australian issue".  However, in Mrs Clarke's explanatory sheet annexed to the declaration it is stated that this magazine is the "December 1984" issue.
         A declaration dated 3 August 1988 by Margaret Michael, shop proprietor in the Queen Victoria building, Sydney, states that she has known Mr Cook for approximately seven years, that her first dealings with him were in 1982 and that she has used chain devices supplied by Mr Cook to display items sold in her business.  Paragraph 2 of her declaration reads:

"During the course of business with Mr Cook I have purchased from him soft toy hangers which comprises a chain made from plastic links, which links are approximately one and a quarter (1‑1/4) inch in length and interlock to form a long chain.  Part of the chain includes a resilient clip which is adapted to pass through a chain link, the clip having a pair of jaws adapted to grip an article to be carried by the chain.  The whole chain device is hung from the ceiling or a beam which is exactly what I use to do in my various shops."

In addition to the above declarations, the evidence‑in‑
support also consists of copies of two letters.  The first, dated 20 October 1987, is from the general manager of Superior Curtain Hardware Pty. Ltd. and addressed "to whom it may concern".  It states that "Alan Cook's Soft Toys has been a purchaser of plastic Cafe Clips for approx. 4‑5 years.  Initially these goods were purchased as a Cash Sale.  Since 1986 we have supplied him on a 30 day account basis".  A description is then given of the "cafe clips" which are well‑known for hanging curtains and the like.  Copies of accounts dated 1985 are attached to the letter.  The second letter, dated 21 October 1987, is from the Royal Agricultural Society of NSW.  It refers to Mr Cook operating a stall in the Royal Easter Show from 1981 to 1987 and to "usage, storage and sale of plastic chains, clips and cuphooks".
         Also lodged with the opposition documents were two pages which appear to have been part of a catalogue or the like and which were described by the opponent's solicitor, in a letter dated 11 August 1988, as "Brochures used by my client in his business and used prior to the commencement of the patent applications" [i.e. the present application and petty patent application No. 564344 also in the applicant's name].  These brochures cannot be treated as evidence‑in‑support since copies thereof were not served on the applicant, however they are of some significance.  They show, in some detail, photographs of toys hanging from a coloured chain by means of simple hook devices.  The hook devices appear to be fixed to the top of each toy and removably hooked through the chain.

Submissions
         The applicant's submissions, in a letter dated 1 March 1989 from its patent attorneys, can be summarized as follows:

(i)Re the Clarke declaration: there is no declaration or evidence from Mr Cook corroborating Mrs Clarke's statements, it is not clear when in the period between 1983 and 1986 the soft toy hangers and hooks were supplied, the "clip parts" are insufficiently described and it is possible that the photographs were taken after the priority date even though the December [or September] 1984 edition of Bazaar magazine is shown therein.

(ii)Re the Michael declaration: it is not clear when the purchases were made and the chain described "is formed using resilient clips which constitute chain links" and therefore is not within the scope of the releasable fastener means of the applicant's claim.

(iii)Re the letters from Superior Curtain Hardware and the RAS: these are not in declaration form and therefore cannot be considered as evidence for the purposes of opposition.

Decision
         I am sympathetic with most of the applicant's submissions on the evidence.  Mrs Clarke's declaration does not sufficiently identify the nature of the "clip parts" of the toy hangers supplied by Mr Cook, it is not clear whether the hangers were supplied before the priority date and it is conceivable that the advertisement for the September 1984 edition of the magazine remained on the counter well after the priority date, especially since it was the first edition and may therefore have required more than the usual amount of advertising.
         I do not agree with the applicant's submission with regard to Margaret Michael's declaration that the chain is comprised in part of the resilient clips, this is a rather strained construction of the wording of the declaration.  I think that paragraph 2 of the declaration does refer to devices akin to the invention claimed in the applicant's specification.  However, it is not clear from the declaration whether the said devices were purchased prior to 6 December 1984.
         The letter from Superior Curtain Hardware suggests that there may have been only one cash sale of cafe clips to Mr Cook sometime in the period from approximately 1982 to 1986.  There is no detail of how many clips were sold or of how they were used by Mr Cook.  The letter from the RAS gives no detail as to the nature of the clips used on Mr Cook's stand.  Generally, even though I have considered these letters, I rate them as being of low probative value since they are not in declaratory form as required by Regulations 55 and 75.
         Mr Cook's "brochures" referred to above clearly do not show the use of cafe clips in his toy hangers, the simple hook devices used therein do not come within the scope of the applicant's claim 1.  Assuming that the clips referred to in Margaret Michael's declaration are cafe clips and therefore at some time Mr Cook may have used cafe clips in his hangers, the question is thus raised of when were the cafe clips used instead of or as an alternative to the simple hook devices shown in Mr Cook's "brochures".  A declaration from Mr Cook accompanied by corroborating evidence may have clarified this matter but such a declaration has not come forth.
I conclude that the evidence before me is entirely unclear as to when Mr Cook used cafe clips in his hanger devices and is insufficient to prove that display devices with all the features of claim 1 of the applicant's specification were sold or used before 6 December 1984. The standard of proof required was dealt with by the UK Appeal Tribunal in Seiller's Application [1970] RPC 103, where at 106 Graham J. stated:

"In my judgment it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross‑examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

These comments were approved by the UK Court of Appeal in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. Even though Graham J. stated that he was not attempting to lay down any rule, I think that his comments on the necessity of corroboration of mere statements as to recollection are applicable to the present circumstances.
Conclusion
         I have found that the opposition has failed on all grounds and that there is no lawful ground of objection to the application and complete specification.  I direct therefore that the application and complete specification proceed to sealing subject to any appeal.
         I award costs to the applicant.

(J.I. WELSH)

Patent attorneys for the applicant: Cowie, Carter & Hendy, Melbourne