Tidy Chain Pty Ltd v Alan Marcel Cook - [1989] APO 15

In the Matter of the Patents Act 1952
‑ and ‑

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

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…

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 Tidy Chain Pty Ltd v Alan Marcel Cook

Details

AGLC: Tidy Chain Pty Ltd v Alan Marcel Cook [1989] APO 15
Case: [1989] APO 15
Decision Date: 11 July 1989

CaseChat Overview and Summary

In the matter of the Patents Act 1952, Tidy Chain Pty Ltd lodged a patent application for an "Article Storage and Display Device" in December 1985, which was advertised as accepted in May 1988. Alan Marcel Cook opposed the patent application, claiming prior use of a similar device. The dispute was brought before the Acting Supervising Examiner of Patents who was required to determine whether Cook's prior use of a comparable device constituted a lawful objection to the patent application.

The primary legal issue before the court was whether Cook's prior use of a similar device provided a valid objection to Tidy Chain's patent application. The court had to examine the evidence provided by Cook to determine if it demonstrated that Cook had used a device with all the features claimed by Tidy Chain prior to the priority date of Tidy Chain's patent application. The court also had to consider the standard of proof required for establishing prior use in opposition cases.

In its decision, the court found that the evidence provided by Cook was insufficient to establish prior use of a device with all the features claimed by Tidy Chain. The court noted that Cook's evidence lacked clarity and was not corroborated by other evidence, such as documents or testimony. The court emphasised the need for clear and corroborated evidence of prior use, especially in opposition cases where cross-examination is not possible. The court concluded that Cook had failed to prove prior use of a comparable device, and therefore, the opposition was unsuccessful.

The court directed that the patent application and complete specification proceed to sealing, subject to any appeal. Costs were awarded to the applicant, Tidy Chain Pty Ltd. This decision reinforces the importance of providing clear and corroborated evidence of prior use in opposition cases, and highlights the high standard of proof required to successfully oppose a patent application.

Orders