Watson Chiarella Pty Ltd v John Alexander Comino
[2021] ADO 2
•29 November 2021
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request by Watson Chiarella Pty Ltd for revocation of registration of design numbers 201811005 and 201811810 both in the name of John Alexander Comino
Delegate: | Debrett Lyons |
Representation: | Requestor: P W Flynn SC of Counsel instructed by MDW Law. Registered Owner: A D B Fox of Counsel instructed by Foundry Intellectual Property. |
Decision: | 2021 ADO 2 Request for revocation of two designs pursuant to section 51 of the Designs Act 2003 (Cth) – whether requestor is sole person entitled to be the owner of the designs – whether requestor is sole or joint designer of the designs – owner found to be the sole designer and entitled to remain recorded as owner for both designs. |
Background
This decision with reasons concerns a request for revocation on the basis of entitled persons (the Request) under s 51 of the Designs Act 2003 (Cth) (the Act) of design numbers 201811005 and 201811810 (the Designs). The Request was filed on 18 December 2019 by an entity described at the time as ‘The Trustee for the MWMC Unit Trust’. This was later corrected to Watson Chiarella Pty Ltd (the Requestor).
The Designs stand in the name of John Alexander Comino (the Owner) and the registered details are as follows:
Design No. 201811005 (the 005 Design), for a “ball valve”, filed 20 February 2018, registered 15 March 2018 and certified on 24 October 2019; and
Design No. 201811810 (the 810 Design), also for a “ball valve”, filed 23 March 2018 and registered 18 April 2018, registered on 18 March 2018 and certified on 30 April 2020.
The Designs differ little from each other and in ways which are described later. For now it is enough to understand that the products at issue, ball valves, are inline valves of the kind well known in plumbing applications, requiring an inlet and an outlet which must be compatible with standard piping, as well as a tap operable to either allow or prevent the flow of a liquid, usually water, therethrough. A typical representation of both Designs, being a left-hand view taken from the Register, is shown below as a reference point for readers.
The dramatis personae
The Owner is the sole director and shareholder of an Australian company, Strongcast Pty Ltd (Strongcast).
Cav. Uff. Giacomo Cimberio S.p.A (Cimberio) is an Italian industrial design and fabrication company;
All Valve Industries Pty Ltd (AVI) is Cimberio’s exclusive Australian distributor.
The Requestor (Watson Chiarella Pty Ltd) is a law firm trading as MDW Law. The Requestor acts for Cimberio and AVI in these procedings.
The Request
Requestor seeks revocation of the Designs on the bases that, at the time they were registered, (i) the Owner was not entitled to be entered on the Register of Designs as the registered owner of the Designs, or (ii) Cimberio should have been entered on the Register of Designs as a registered owner of the Designs.
Behind the Request lie the assertions that Cimberio is the sole entitled person since drawings of the Designs were first prepared by employees of Cimberio before the priority dates of the Designs, or in the alternative, that Cimberio and the Owner are co-entitled and since the Designs did not nominate Cimberio as such they should now be revoked.
There is no claim that the Designs were not new and distinctive at their relevant filing dates. The only question is one of entitlement.
The Evidence and Hearing
Evidence (detailed below) was filed by the parties after which they were invited to request a hearing. Both parties asked to be heard. In advance of the hearing they provided outline submissions which I have taken into account along with oral argument made during a video-conference hearing which took place on 7 June 2021 before me, acting in my capacity as a delegate of the Registrar of Designs.
At the hearing the Requestor was represented by P W Flynn SC of Counsel instructed by MDW Law and the Owner was represented by Mr A D B Fox of Counsel instructed by Foundry Intellectual Property.
The evidence filed on behalf of the Requestor consists of declarations by:
Mr Roberto Cimberio, a director of Cimberio, made 29 June 2020, 1 September 2020 and 2 December 2020;
Mr Trent Kilner, a director of AVI, made 29 June 2020, 1 September 2020, and 2 December 2020;
Mr Alfredo Cerutti, an employee of Cimberio, made 29 June 2020;
Mr Augusto Riva, an employee of Cimberio, made 1 September 2020; and
Mr Gary Gibson, from GRG Consulting Engineers, made 2 December 2020.
The evidence filed on behalf of the Owner consists of declarations by:
The Owner, Mr John Alexander Comino, made 29 June 2020, 28 August 2020 and 2 December 2020; and
Mr William S Hunter, mechanical engineer, made 31 August 2020 and 2 December 2020.
In addition and before the hearing, the Requestor filed sets of transparencies as follows:
Overlay of the C9746 valve with Design 810;
Overlay of the C6827/5 valve with Design 810; and
Overlay of the C6827/3 valve with Design 810.
Discussion
The entitlement claims in overview
The Owner opposes revocation of the Designs asserting that he is the person who created the Designs, as he conceived of the Designs, reduced them to visible form and is thus the sole person entitled to the Designs. The Owner asserts that at his request Cimberio manufactured certain bespoke plumbing fittings for Strongcast. The Owner further asserts that Cimberio was not engaged to design any products, but was commissioned to prepare engineering drawings for the subsequent manufacture of commercial quantities of products to specifications given by the Owner.
The Requestor’s primary submission is that all significant aspects of the shape, configuration, pattern or ornamentation of the Designs were copied from prior art comprising ball valves designed by Cimberio. Further, that minor additions to or variations upon that prior art by the Owner are principally utilitarian and have little effect on the overall visual impression of the Designs.
Further background to the dispute
Cimberio was established in Italy in 1957 and has since designed and made a great many fittings for plumbing, heating, air conditioning, and gas and water distribution systems. It does business internationally via a network of subsidiaries and distributors.
As stated, AVI is Cimberio’s Australian distributor. There is no evidence of direct dealings between the Owner or Strongcast and Cimberio but the Owner has done business with AVI over many years and had an agreement with AVI whereby AVI sourced plumbing fittings for Strongcast from Cimberio.
Strongcast in turn provides plumbing fittings including ball valves of the kind described above to its customers being water utility companies in Australia. From time to time those companies or the public regulators require conformity of those fittings with particular specifications. Other times modifications are suggested by customers.
Strongcast has provided ball valves to a customer, Unity Water. Strongcast recieved feedback from Unity Water suggesting to it the idea of a locking mechanism to the valve. Certain prototypes followed resulting in contact and discussion between the Owner and AVI concerning the final design and fabrication of a valve incorporating a locking mechanism.
Later, the Owner claims to have conceived of a further idea which was then reduced to a prototype model whereby the same ball valve had a female connecting thread machined into the bore of the water inlet nozzle, thus providing for both male and female coupling options.
Later still, the Owner thought to reduce to a prototype model the same valve with a female connecting thread machined into the bore of both the water inlet nozzle and the water outlet nozzle, thus further expanding the valve’s coupling potential.
In what follows in this decision the ball valves are generally referred to by the codes given to them by Cimberio, and it is the so-named C6827 product (the C6827 valve) in its original and then modified forms that it alleges became the Designs.
Development of the Designs – the Requestor’s Account
The Requestor’s evidence is that Cimberio is a long established company that produces tens of millions of finished products annually. Many of these are unique in the sense that Cimberio will respond to customer requirements largely by adapting existing stock componentry to the customer’s request. Cimberio states that the core parts of ball valves - the body, ball, nut and handle - are stock parts. It employs a technical and design team which selects the base valve or components suitable to produce a finished product meeting the customer’s needs, adapting it as necessary and where that is not possible, it develops specific custom components.
A so-called family of ball valves, being the C6827 valve and related valves were created by Augusto Riva, Alfredo Cerutti and Tiziano Guidetti, all members of the technical and design team, who assigned their rights in the design of those valves to Cimberio.
The Requestor disputes that the Owner made any design contribution as a matter of fact, but in the alternative submits that, from a design perspective, the additions allegedly made by the Owner are on any view insufficient to constitute him as the sole, or even a joint designer of the Designs. The basis on which a design becomes registered is as a new and distinctive combination of all of its elements. The Requestor states that it is an error in law for the Owner to contend that he is the designer of certain ball valves merely because he alleges he contributed some functional and visually minor features to them.
Development of the Designs – the Owner’s Account
The 810 Design
The Owner’s submission is that before the priority dates and following feedback from Unity Water the Owner conceived the idea of introducing a locking mechanism to ball valves sourced from Cimberio. The Owner designed a plate that could be retrofitted onto the valve and also drilled a hole into the valve handle so that the handle could be secured in a closed position using a padlock when the handle was rotated 90 degrees and the holes aligned. Photographs of this prototype which on the evidence made their way to Cimberio are shown below:
The Owner commissioned a business, RCR Laser, to manufacture stainless steel plates of the kind just described and commissioned Machinery Solutions Pty Ltd to drill 7mm holes into the handles. The valves were reassembled with the stainless plate in place and, according to the evidence, sold to customers.
As described above, the Owner later thought to modify the valve in yet another way which became the product of 810 Design. The Owner commissioned Machinery Solutions Pty Ltd to prepare a prototype of this double coupling valve by machining an internal female thread into the inlet bore of the nozzle of the valve. Photographs (shown below) of that prototype were taken and sent to AVI in April 2017.
The Owner contacted AVI to relay his desire for commercial quantities of a ball valve that included both the locking mechanism and the dual thread. This was passed on to Cimberio with the result that some fitness testing apropos the added internal thread was undertaken at the Owner’s request at the Australian National Testing Laboratory. The later test report was positive but meanwhile some to-ing and fro-ing regarding the lockable handle resulted in the engineering drawing shown below produced by Cimberio (the “wing” marked thereon for clarity).
The 005 Design
What was to become the 005 Design is all but identical to the 810 Design, differing only in that a female internal thread is provided on both the inlet and outlet sides of the valve. The Owner commissioned Machinery Solutions Pty Ltd again to prepare a prototype, shown below, noting that this prototype does not show the locking plate:
In both cases, the Owner used a local company, Infinity Designs, to prepare drawings suitable for the applications for the Designs.
Preliminary findings
The submissions canvas certain arguments which I have found best to consider first in order to make way for my primary findings. These matters relate less to the application of the law on entitlement as they do to the credibility of the parties’ claims.
The Owner and AVI
The first concerns the nature of the arrangements between the Owner and AVI. The Owner gives evidence that in 2013 Strongcast entered into a so-called Distribution Agreement with AVI whereby AVI sourced off the shelf plumbing fittings for Strongcast from Cimberio. That agreement defines their relationship as vendor and vendee. Trent Kilner, a director of AVI, gives evidence that the relationship between Strongcast and AVI was one of distributor and importer. Whilst I cannot take issue with those characterisations I am conscious that the picture of an arm’s length relationship between the two businesses suits the Requestor, not least because of the Owner’s ambition to characterise AVI, for certain purposes, as its agent.
I note here that I am not influenced by the Requestor’s attempts throughout its submissions to draw a line between the Owner and Strongcast. One is the controlling mind of the other and I can not appreciate in the evidence where anything of significance might be seen differently by strictly observing the corporate veil. As such, when I have referred to actions taken, or representation made, by the Owner or by Strongcast the choice is merely contextual and no other distinction is being made.
That said, the Requestor is correct in stating that there is no evidence of an express agency between either the Owner or Strongcast and AVI. I find that the Requestor is also correct in stating that there is no evidence of an implied agency between the two arising out of the conduct of the parties. Indeed, on the facts there is much to support a characterisation of AVI as Cimberio’s Australian agent more than as its distributor. Nevertheless, I have remained cautious of the Requestor’s written submission that “[t]his is not a case where Strongcast (let alone Comino) commissioned Cimberio to produce a design or to prepare drawings” for the reason that its accuracy seems to depend on a formal understanding of commissioned work when all that might matter for the purposes of entitlement are the circumstances of the Owner’s request.
In this context I note, too, the existence of a so-called “Confidentiality Deed” between Strongcast and AVI. The Requestor is quick to point out that the Deed does not relate to the Designs and has was not fully executed but neither of those shortcomings distract me from the observation that the Owner and AVI either contemplated or considered themselves likely to engage in confidential dealings or disclosures.
I find that the relationship between AVI and the Owner went further than a simple supplier/customer or vendor/vendee arrangement and did, on the evidence, show a course of dealings where AVI acted as a conduit to information flow in both directions between the Owner and Cimberio.
Payments and sign-off on drawings
There are two aspects to the payments matter. One is the Requestor’s claim that “Cimberio has borne the entirety of the capital costs in the development of [the 810 Design]” and “has never been paid for [that] design work”.
The insinuation of course is that if Cimberio was truly commissioned by the Owner to produce drawings according to the Owner’s specifications then commercial practice would ordinarily make the Owner liable for that work. However, the nature of the relationship between the parties here where they are dealing in commercial quantities and – by its own evidence – Cimberio has the practice of modifying existing stock parts, might very much suggest to me the likelihood of a commercial understanding that the fabricator would absorb such costs. On the evidence as a whole I can read nothing into this claim in terms of how it might inform my decision on entitlement.
The second is the claim that the Owner had not paid Cimberio in full for certain matters unrelated to these Designs. This claim arose in the context of sign-off of the drawings for the ball valve modications. The evidence is that when the ball valve modifications as described were put to AVI, AVI requested that they be made in writing. It is said by the Requestor that “AVI was concerned that Strongcast would renege on any purchase order for the manufactured valve and wanted to confirm their customer’s requirements before approaching AVI’s manufacturer, Cimberio, and requesting that Cimberio produce designs which responded to those general requirements”, and later, that “Cimberio requires all its customers to approve the final drawings before manufacturing to ‘lock in’ a design and avoid requests for changes after manufacturing has commenced. This was particularly important because Strongcast had previously reneged on promises to purchase commercial quantities.”
Once more, the implication of this claim is that it was only because of this alleged prior default that Cimberio requested sign-off by the Owner when what might elsewise be inferred from that request is confirmation that the drawings authentically reflected the brief given. Again, I can read nothing into this claim in terms of how it might help my decision on entitlement.
Copyright
A final aspect of the Requestor’s submissions that I would like to dispose of here is anything arising from the assertion that “the drawing used by Mr. Comino to base the representations for [the Designs] were subject to Cimberio’s copyright” and that “Cimberio has not waived its copyright.”
A claim to copyright has no direct relevance to the entitlement claim which is the basis of these proceedings for, as the Registrar’s delegate, Mr Richards wrote in the case of John Michael Jarvie v Comtec Industries Pty Ltd [2018] ADO 5 (Jarvie):
… authoring drawings is not the same as being the designer of the thing those drawings depict—the drawings could potentially be subject to copyright, but the ownership of this copyright does not necessarily inform the present enquiry.
This is a fitting place to turn more specifically to the law as it relates to these proceedings.
The Law
Section 51 of the Act provides that a person may apply to the Registrar for revocation of the registration of a design under s 52. Pursuant to s 52(2), if the Registrar is satisfied that:
(a) a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or
(b) each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time;
the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.
The effect of such a declaration is that the parties will be notified that the registration is revoked (s 52(3)). The making of the declaration under s 52(2) is discretionary and the onus is on the Requestor to satisfy the Registrar of the disputed issues on the balance of probabilities.[1]
[1] Australian Fitness Supplies Pty Ltd v Rasheed Rane [2013] ADO 6, [41].
Section 13 of the Act provides:
13Who is entitled to be registered as the registered owner of a design
(1) A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the registered owner of a design that has not yet been registered:
(a) the person who created the design (the designer);
(b) if the designer created the design in the course of employment, or under a contract, with another person—the other person, unless the designer and the other person have agreed to the contrary;
(c) a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law;
(d) a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person;
(e) the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d).
(2) Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of a design that has not yet been registered if:
(a) the person has assigned all of the person’s rights in the design to another person; or
(b) the person’s rights in the design have devolved on another person by operation of law.
(3) To avoid doubt:
(a) more than one person may be entitled to be entered on the Register as the registered owner of a design; and
(b) unless the contrary intention appears, a reference to the registered owner of a registered design in this Act is a reference to each of the registered owners of the design.
(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered.
As stated, the designer is the person who created the design. Section 5 defines a “design”, in relation to a product, to mean “the overall appearance of the product resulting from one or more visual features of the product”. Section 7(1) goes on to state that “visual features”, in relation to a product, include “the shape, configuration, pattern and ornamentation of the product”.
The case law has identified the designer as the person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the product and reduces it to visible form.[2]
[2] Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75, 80 quoted in LED Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85, 96 [26].
Application
Putting to one side for the moment the Requestor’s submission that the Owner created nothing in the Designs, the Requestor’s fallback argument is that anything the Owner might have contributed is simply functional and, in any event, trivial over that which the Requestor lays claim as its prior art material.
There are difficulties in law with that argument. Those difficulties are exemplified and augmented by other problematic issues in the following submission:
[The] internal thread is necessarily invisible when its normal application when installed (that is, when the internal thread has been screwed over another fitting). The internal threads are not visible in ordinary use. The hole in the handle and the locking wing, in the mind of an informed user, are not features which affect the core operation of the ball valve. They are not important visual features of the designs sufficient to alter the overall impression of the valve, which is otherwise entirely identical with C6827 valves which have received public certification, and have been publicly marketed, supplied and used in Australia continuously from 24 October 2013.
In first place, s 7(2) provides that a “visual feature” may serve a functional purpose. More importantly, to repeat the point made earlier, these are not proceedings for invalidation of a design, and so whilst s 15(1) states that a design is a registrable design if it is “new and distinctive” when compared with the prior art base for the design as it existed before the priority date, it is only newness (not distinctiveness) which is relevant to entitlement. That was made clear in Australian Fitness Supplies Pty Ltd v Rasheed Rane [2013] ADO 6 at [36]:
“I add here that more than once when drawing comparisons between the Design and published material, the statement of grounds claims that the published material is identical or substantially similar in overall impression to the registered design. That is not the test. The relevant provisions refer repeatedly to ‘the design’. The test of entitlement is in my view equivalent to the test for ‘newness’, rather than the ‘distinctiveness’ test.”
From a jurisprudential standpoint, this must be correct. It is therefore essential to note that s 16(1) states that a design is “new” unless it is identical to a design that forms part of the prior art base for the design.
For that reason the Requestor’s submissions, for example, that “[t]he informed user of [the Designs] are plumbers who might install these valves in water metering applications” or that “[the Designs] are substantially similar in overall impression to C6827” (emphasis added) show a misapplication of the law. Section 16(2) states that a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design. Section 19 deals with factors to be considered in assessing substantial similarity in overall impression and is refereable to the standard of the informed user. But, as I have said, entitlement is concerned only with ‘the design’ and with its newness, not distinctiveness. So the italicised concepts (above) are outside and irrelevant to the assessment of entitlement.
Further, I must ignore the Requestor’s claims that what the Owner may have contributed was, in the abstract, known to the engineering world. I am largely at one with the Owner’s submission that:
It is irrelevant that the Designs contained a number of features from previous Cimberio ball valves, which it should be noted are also features of the ball valves of many other manufacturers. Ownership of prior art does not mean that a person is an entitled person. Further, the delegate must consider what is new, or novel, in relation to the product, not valves or plumbing equipment generally. It is to be recalled that the definition of “design” is in relation to a “product”.
So too, the sets of transparencies filed by the Requestor referred to in [15] which allow visual comparison of the Design representations with drawings prepared by Cimberio, are largely a distraction, as are the repeated statements thoughout submissions that anything the Owner added was de minimis.
The essential questions are (i) what was new to the Designs, and (ii) who created what was new. In short, the answer to (i) is that the visual features in the 810 Design, not part of the prior art, are: (a) the addition of a side wing to the body of the valve, (b) the addition of a hole to the valve handle/lever, and (c) the addition of a female internal thread to the nozzle of the valve which already had an outside male thread.[3] The new visual features of the 005 Design are (a) to (c) above, plus (d) the addition of a second female internal thread to the other nozzle of the valve.[4]
[3] Hunter 1 at [22] and Hunter 2 at [5]. See also Gibson at [8.2].
[4] Hunter 1 at [29] and Hunter 2 at [5]. See also Gibson at [8.2].
It is only (d) which is a new feature of the 005 Design over the 810 Design and this brings me to say something of the internal threads in both Designs. The Requestor comments that “[t]his internal thread is necessarily invisible when its normal application when installed (that is, when the internal thread has been screwed over another fitting). The internal threads are not visible in ordinary use.” So much is true but the issue is not whether the feature is visible in use but whether it is a visual feature of the Designs[5]. As the representations of the Designs go, I find that the addition(s) of the internal threads is new, but it is not a visible design feature. It follows that when the alleged feature of the internal screw threads is subtracted from the Designs, the same considerations apply to both Designs when it comes to determination of point (ii) - who created the new features.
[5] Even less relevant is the expert evidence that “[the internal thread(s) might be viewed as an optional feature which, if removed, would not affect the core operation or application of the valve.”
The Requestor’s submissions can be largely contracted since much space is given over to discussion of Cimberio’s drawings and how the above identified features, (a) to (c), compare with or are shown in those drawings. At their highest the drawings for the C6827 valve are essentially identical to the Designs. No other drawings show any better the Design features together and so it is enough to focus on the origin of the C6827 valve.
The broadest statement is that Cimberio did not ever receive instructions to produce drawings for the C6827 valve for Mr Comino. This statement seems to carry a false suggestion since all I believe is being said is that Cimberio did not receive any directions from Mr Comino himself, or from Strongcast directly, and that Cimberio’s dealings were only with AVI; perhaps in addition that Cimberio only produced anything at AVI’s request as its distributor. I do not think it says anything reliable about what was communicated, perhaps indirectly, concerning the features of the Designs.
The next most forceful evidence filed by the Requestor are the declarations of Roberto Cimberio, Alfredo Cerutti and Augusto Riva who each give evidence that Cimberio designed C6827 and its related valves. Cimberio’s design team lays claim to conception of the C6827 valve, however beyond that assertion the supporting statements seem to circle the point of conception, referring instead to:
(i) Cimberio’s long history of designing ball valves and fittings for plumbing and other purposes (something the Owner does not contest);
(ii) Cimberio’s modus operandi when it comes to new design requests as outlined at [25];
(iii) the design and development of each of the thirteen sub-components which when combined gave rise to the C6827 valve, including the valve body, stem, ball, gaskets, elastic and anti-friction rings, self-locking nut, gland screw and handle (something else the Owner does not contest, nor that those components were in public use before the filing of the Designs[6]); and
(iv) the “iterative development of the Cimberio 36496/0 ball valve family, and previous related designs.”[7]
[6] Indeed at [30] above the letters “CIM” inside a lozenge device can be seen cast into the valve handle which the Owner first modified.
[7] Declaration of Roberto Cimberio (Support), [11]-[14].
The visual features of the 810 Design are all present in the C6827 valve but it is the Owner’s assertion that each of those features was conceived and designed by the Owner. Putting aside the addition(s) of the internal threads, I accept the Owner’s account of the motivation for the locking handle. Whilst the Requestor states that utility providers/regulators had published guidelines concerning locking mechanisms I do not see how that fact would cause me to think that the Owner’s primary motivation was anything other than to accommodate his existing customers, in this case, Unity Water. So motivated, he produced and commissioned the production of prototypes, photographed them and provided the photos to AVI. His request was for Cimberio to integrate the locking plate with the body of the valve, add the hole to the handle, and produce engineering drawings for the manufacture of valves which included those features. Modifications to Cimberio’s initial drawing were suggested by the Owner and implemented by Cimberio. It is immaterial to that narrative that lockable ball valves were known, manufactured or made public in other design forms (by Cimberio or anyone else), or that water supply regulators had promulgated information about such things.
On the other hand, there is evidence of Cimberio’s “engagement”, I will call it for now, in the process. The final form of the locking plate (side wing) in C6827 is not that of the retrofittable plate of the Owner’s experimental mock-up or the stainless manufactured plate which the Owner retrofitted to existing valves. In addition, there is the fact that Cimberio reduced the C6827 valve to visual form by way of the engineering drawing.
The Requestor’s submissions are that:
At the highest, Mr Comino conceived a function (for instance, a lockable handle) that Cimberio then gave effect to with the use of its configurations and previous components and which it then reduced to writing on copyrighted drawings. Mr Comino’s role was to suggest the addition of a lockable handle. But such a role does not constitute him as a designer. He provided no clarity or instructions as to that feature. He did not describe its shape, position, material or any other feature. The sole level of detail given by him was that “the wing needs to come out further to clear the body of the valve, otherwise it is difficult to fit a padlock.” He then did nothing more than point to a previous Cimberio locking wing on a previous Cimberio ball valve. That is merely specifying a functional feature that he wanted for admittedly functional reasons, using a previous design by Cimberio as a shorthand way to describe what he wished to specify. Mr. Comino did not conceive of the shape, the dimensions, the position, the colour or any other design aspect of the locking wing. Each of these were conceived by Cimberio and reduced to visual form by it too. Further, and in any event, to the extent that Mr Comino did conceive of any design aspect of the locking wing (which is denied), the locking wing made an insignificant contribution to the overall visual impression of the valve as distinct from Cimberio’s contribution as embodied in the prior art valves, such that any such contribution by Mr Comino is insufficient to constitute him a designer of the valve.
In the case of Jarvie, a Mr Whelan received drawings which had been prepared by the requestor in that case. The drawings included improvements the requestor had conceived. The Delegate stated at:
From this point, Mr Whelan declares that he applied his skills as an engineer to certain technical problems with the above designs. The result of Mr Whelan’s labours was the drawings that depict the Designs. …. I note that there are differences, particularly to the sheet pile component. Taking Mr Whelan’s declaration at face value, these may represent a significant application of engineering nous, but this is not the point. Designs are concerned with visual appearance. Visually then, the two iterations of the sheet pile are very close and the pin pile is almost identical.
…
The Requestor has shown how, through many years and iterations, and in particular the spark of inspiration that hit him in early 2014, he arrived at the ‘Before’ shapes ... Mr Whelan’s case is, at its highest, that he took the ‘Before’ shapes and applied his skill as an engineer to them, resulting in the ‘After’ shapes. Mr Whelan is therefore clearly not the person whose mind conceived of these shapes—his contribution was a refinement of shapes already conceived in the mind of the Requestor. Mr Whelan’s work was that of a drafter and engineering consultant tasked with ironing out the kinks in someone else’s original concept.
In LED Technologies Pty Ltd v Elecspress Pty Ltd [8], a Mr Ottobre provided sample products and drawings to an overseas manufacturer which then created engineering drawings for the products. Gordon J stated at [26]:
On the facts just described, it is clear that Mr Ottobre is the person who conceived the relevant shape, configuration and pattern of the designs and reduced it to a visible form; “M” simply converted that design to an electronic form in order to facilitate the production process. Put another way, it was Mr Ottobre, not “M”, who had the idea for dual and triple combination LED lamps in one base. It was Mr Ottobre who reduced that idea to visible form in the sketches. As the engineering drawings marked “1”, “2” and “3” on Annex C record, it was Mr Ottobre’s sketches which contained the features different from those in any other previous design. Accordingly, Mr Ottobre was “the person who created the design …
[8] (2009) AIPC ¶92-330, Federal Court of Australia, 18 December 2008.
In summary, Cimberio acknowledges that in 2017 the ball valves later modificed by the Owner did not include a locking plate/wing. The earliest appearance of both the locking wing and drill holes in the handle was in early 2018, after the Owner had communicated those ideas by photographs and in writing. The Requestor concedes that the Owner discussed these modifications with AVI but asserts that the discussion lacked specificity and detail. In my assessment the photographs, at the very least, communicate all that is entailed in what is an easily comprehensible idea. Moreover, that idea – in both of its specific aspects – made it way into the engineering drawings.
The Cimberio design team members, Augusto Riva and Alfredo Cerutti, give evidence that the C6827 valve reflects a number of “eccentricities” in the Cimberio manufacturing process, evidenced in the drawings, which were unknown to the Owner. I can accept that to be most likely true, but it is no more than consistent with Cimberio’s role to refine the final form and “iron out the kinks”.
So, too, Mr Kilner describes Cimberio’s work considering materials, thickness, torque ratings, strength ratings and other engineerings considerations before finalizing the drawings. I accept that reduction of the Designs to drawings from which workable products took their shape required engineering skill and “nous” but, as the cases highlight, this is not determinative of who, in law, is the designer.
My assessment is that the Requestor believes Cimberio’s function as a draftsman and problem solver is equivalent to a role as designer. There is little doubt in my mind that this belief is genuine and that in the engineering community that equivalence might be a notion commonly held, but it is not the test of creation or the determinant of design entitlement under the Act. As to the drawings themselves, recall that it was Mr Ottobre who reduced an idea to visible form in sketches, not the polished final drawings. In my assessment the photographed prototypes hold more weight than those sketches.
I have no issue with the Requestor’s claim to engagement in the process of formalising the Designs but I do not, on the facts and bearing in mind the onus, find that it was the designer or co-designer of the Designs.
Decision and Costs
Section 52(2) of the Act is set out above. I am not satisfied that a person or persons other than the Owner were entitled persons at the times of registration of the Designs. I am satisfied that the Owner was an entitled person. For these reasons there is no cause to revoke the Designs.
The Owner has sought an award of costs. The ordinary course is for costs to follow the event and I award costs against the Requestor.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group.
29 November 2021
0
4
1