Watson Chiarella Pty Ltd v John Alexander Comino - [2021] ADO 2

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…

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: [2021] ADO 2
Decision Date: 29 November 2021

CaseChat Overview and Summary

In Watson Chiarella Pty Ltd v John Alexander Comino, the plaintiff sought to revoke the registration of design numbers 201811005 and 201811810, which were registered in the defendant's name. The plaintiff claimed that these designs were their intellectual property and that the defendant had unlawfully registered them in his name. The case was heard in the Federal Circuit Court of Australia.

The primary legal issues for the court to determine were whether the plaintiff had established that the designs in question were their intellectual property, and if so, whether the defendant had acted unlawfully by registering them in his own name. The court needed to assess the evidence presented regarding the creation and ownership of the designs and whether there had been any fraudulent or deceptive conduct by the defendant.

The court examined the evidence and concluded that the plaintiff had not successfully demonstrated that the designs were their intellectual property. The court found that the plaintiff had failed to establish that they had created the designs or that there had been any transfer of ownership to them. Consequently, the court dismissed the plaintiff's application for revocation of the design registrations. The court found that the defendant had acted lawfully in registering the designs in his name, as there was no evidence to suggest otherwise. The final orders of the court were that the plaintiff's application for revocation was dismissed and that the defendant was to retain the registrations of design numbers 201811005 and 201811810 in his name.

Orders