Wynnes Patent and Trade Marks Attorneys Pty Ltd v Wamlez Pty Ltd
[2023] ADO 3
•31 July 2023
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination by Wynnes Patent and Trade Marks Attorneys Pty Ltd of design registration 201712220 in the name of Wamlez Pty Ltd
Delegate: Benjamin Goldsworthy Representation: Owner: Peter Creighton-Selvay of Counsel instructed by Ashley Dickson of Raven IP
Requestor: Ben Fitzpatrick of Counsel instructed by lawyer Michael Finney and Wynnes Patent & Trade Mark Attorneys Pty Ltd
Decision:
2023 ADO 3
Designs Act 2003 (Cth) – section 63(3) – newness and distinctiveness – disclosure insufficient for certain prior art and likely subject of confidential fetter – not satisfied on the evidence that sales took place – remaining prior art
not identical or substantially similar in overall impression to registered design
Background
1.These reasons concern a registered design for which a certificate of examination has already been issued. After a second examination of the design, Wynnes Patent and Trade Marks Attorneys Pty Ltd requested to be heard regarding the matter. However, throughout the process the parties referred to the requestor as being Crimesafe Security Systems Pty Ltd (‘Requestor’), so I have also done so throughout these reasons for ease of reference.
2.Wamlez Pty Ltd (‘Owner’) is the owner of the design registration (‘Design’), details of which I reproduce below:
Priority date: 18 April 2017 (‘Priority Date’)
Registration date: 18 May 2017
Product name: Driver bit for fastener
Design number: 201712220
Representations:
3.The following Statement of Newness and Distinctiveness was filed with the original design application:
Newness and distinctiveness of the design resides in the shape and/or configuration of a driver as shown in the representations. (‘SoND’)
4.Pursuant to s 63 of the Designs Act 2003 (Cth) (‘Act’)1 the Requestor sought examination of the Design. The request was filed with prior art documents which, in the Requestor’s view, rendered the Registered Design not new and distinctive when compared to the prior art base. The parties paid the relevant fees and the Design was subsequently examined. The examiner raised no grounds for revocation and the examiner expressed an intention to issue a certificate of examination. On 16 March 2021, the Requestor asked to be heard.
5.This office issued directions for filing evidence and submissions to the parties. The Requestor’s Evidence in Support (‘EIS’) was filed on 20 August 2021. This consists of statutory declarations of:
·Nicola Milligan, Sales and Marketing Assistant for the Requestor, dated 21 October 2020 with Annexures A to H (‘Milligan-1’)
·Robert Bulte, former owner of Safe T Fasteners Pty Ltd, dated 22 October 2020 and Annexures A to E (‘Bulte-1)
·Rameshkumara Ramachandran, Chief Technical Officer of the Requestor, of 11 August 2021 with Annexures A to N (‘Ramachandran-1’)
·Nicola Milligan of 11 August 2021 with Annexure A (‘Milligan-2’)
6.On 14 February 2022 the Owner filed its Evidence in Answer (‘EIA’), which consists of a declaration of Warren Taylor, Director of the Owner and related companies Safe T Fasteners Pty Ltd and Security Screws Plus Limited, dated 14 February 2022 with Exhibits 1 to 19 (‘Taylor-1’).
7.On 13 April 2022 the Requestor filed its Evidence in Reply (‘EIR’). This consists of a statutory declaration of Rameshkumara Ramachandran dated 13 April 2022 with Annexures A to AH (‘Ramachandran-2’), and a statutory declaration of Nicola Milligan dated 13 April 2022 with Annexures A to O (‘Milligan-3’).
8.The matter was set down for hearing. The Requestor filed written submissions on 14 April 2023 (‘Requestor’s Submissions’). The Owner filed written submissions on 24 April 2023 (‘Owner’s
1 Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Designs Act 2003 (Cth) and a reference to a regulation is a reference to such in the Designs Regulations 2004 (Cth).
Submissions’) along with another declaration of Warren Taylor dated 23 April 2023 with Exhibits WAM 1 to WAM 7 (‘Taylor-2’).
9.I am to decide this matter as a delegate of the Registrar of Designs having heard the parties by videoconference on 1 May 2023. Ben Fitzpatrick of Counsel, instructed by Michael Finney and Wynnes Patent and Trade Mark Attorneys Pty Ltd appeared on behalf of the Requestor. Peter Creighton-Selvay of Counsel, instructed by Ashley Dickson of Raven IP appeared on behalf of the Owner.
Onus
10.Section 68(1)(a) provides that the Registrar must be satisfied that a ground for revocation of the registration of the design has been made out before revoking a registered design. The Requestor here relies solely on the ground that the Design was not new and distinctive as at the Priority Date. Where a person has made an examination request under s 63 referring to material in relation to ‘newness and distinctiveness of the design’, the Requestor will bear the burden of satisfying the Registrar that a ground exists for revocation.2 It is the Requestor who must establish on the balance of probabilities that the Design is not a registrable design. I do note that to the extent that a party relies on an allegation of confidential fetter, it will be for that party to demonstrate such. Thus, the onus will shift to the Owner to the extent that it alleges any material is subject to a confidential fetter and thus should not be considered prior art.
Evidence
11.The evidence in these proceedings is lengthy and at parts not relevant. Below I have summarised the evidence, with some details where I consider to be most relevant to the issues.
2 Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd [2021] FCA 208 [35]-[38] (Greenwood J) (‘Key Logic’). Past decisions of this office also take that approach, see GWR Pty Ltd, trading as Uniquip Industries, and Yuequing Myow Electric Co Ltd [2011] ADO 3, [18] (Hearing Officer Williams) and more recently GH PTM Pty Ltd trading as Griffith Hack v Clipex IP Limited [2022] ADO 3 (‘GH PTM’), [12] (Hearing Officer Barbey). See also, Stamp v W J Powell Pty Ltd [1918] HCA 14 (Barton, Duffy and Rich JJ).
EIS
12.Various statutory declarations are provided as the EIS. There are formal requirements for statutory declarations which are not met in these documents, but they nevertheless substantially comply with the requirements for a declaration made under the Act.3
13.Milligan-1 and its Annexures are in summary a mixture of catalogues from 2013, together with invoices and photographic examples stated to have been purchased from the Owner in 2017. Annexure A is a copy of a document from a 2011 convention for the Requestor’s authorised installers or licensees; Annexure B is a copy of a 2012 technical bulletin; Annexures C to F are copies of quotations, sales invoices and MYOB payments from before the Priority Date and mentioning product codes ‘18A-DRIV-M25’ and ‘17A-DRIV-M5-100’; Annexure G is a copy of the Requestor’s price list from September 2013, which includes products under the product codes ‘18A-DRIV-M25’ and ‘18A-DRIV-M25-100’, which I reproduce below in Schedule 1 to these reasons; and Annexure H consists of various photographs of what are termed the ‘M25 Driver Tool’ which the Requestor had allegedly purchased from the Owner in 2017.
14.Bulte-1 in summary contains assertions about alleged similarity of the Design to prior art, some history about the development of various security fastener and driver tool products as well as some background to Mr Bulte’s business of supplying the Requestor with tamper proof fasteners.
15.Ramachandran-1 provides some background to the development of the Design, the nature of the Requestor’s business and past dealings between the Owner and the Requestor. It describes Mr Ramachandran’s experience of many years and includes a self-characterisation that he is an informed user of tamper proof security screws and associated driver tools. Opinions are expressed comparing the Design with various prior art. The Annexures in summary consist of: Annexure A being catalogues of products provided by the Requestor dated September 2013; Annexure B being a 2012 technical bulletin showing the type of fastener for which the drivers made to the Design are said to be aimed at fastening; Annexures C and D showing two bit drivers; Annexure E being corporate documentation; Annexure F showing Australian patent application 2014200312 B2 (‘312 Patent’ pictured in Schedule 1 to these reasons); Annexures G to M being various examples of what are
3 See Solaire Pty Ltd [2017] ATMO 106, [11]-[12] (Hearing Officer K Brown).
termed as prior art for drivers or screws (some of which are not clearly dated); and Annexure N being United States patent US9,132,534 for a ‘screwdriver bit’.
16.Milligan-2 makes a number of corrections to certain language of Milligan-1 and attaches a copy of Milligan-1. It confirms that the Requestor does not sell products directly to the public and does so by authorised installers and licensees, being distributors.
EIA
17.Taylor-1 in summary consists of a history of Mr Taylor’s experience and his companies. Mr Taylor’s opinion about comparisons with prior art in the EIS are also expressed. Taylor-1 asserts that ‘[t]here has been no self disclosure of the design of design number 201712220’.4 I summarise the Exhibits from here: Exhibits 1, 2 and 19 being documents relating to the ownership and control of the companies of Mr Taylor; Exhibit 3 being a license agreement from 2010; Exhibit 4 being an inventory list from 2010; Exhibit 5 is a series of tables listing product sales in 2009; Exhibits 6 and 7 being inventory reports from 2009 to 2010; Exhibit 8 being hand written notes in a table with entries from 2007 to 2009; Exhibit 9 being a data table; Exhibit 10 being technical drawings which are undated; Exhibit 11 being a table with various entries alongside images of different drivers, titled ‘MK25 Driver Bit Register’; Exhibit 12 being an unsigned supply agreement; Exhibit 13 which appears to be a meeting invitation dated 9 March 2017 with an email sent earlier that day from Mr Taylor to Mr Ramachandran, which summarises a discussion with Ramachandran and then makes some notes stating amongst other things that the, ‘“New” Torso MK25-100mm or 18:Series Drivers’ and ‘“New” MK5-Driv-Torso-50mm Stubby design’ are ‘on hold indefinately [sic]’, referencing customer surveys; Exhibit 14, which is an email from 24 April 2017 enclosing test reports with drawings dated March 2017, referencing ‘the New Driver M25-100-Torso’, stated as having been issued to Mr Ramachandran on 10 March 2017. The email shows images of products labelled ‘MK25-Driv-100 (old Style)’ and ‘MK25-Torso-100’ and a side view of a tool which matches the Right Hand View and Left Hand View of the Design; Exhibits 15 and 16 being two screen capture images from videos; Exhibit 17 and 18 being copies of purchase orders from the Requestor to a supplier dated from 2013 and 2018.
4 Taylor-1, [10](e).
EIR
18.Ramachandran-2 makes various allegations around the testing and sales of products with central focus being on an email from 8 November 2016 which I later discuss. Annexures A to C consist of, in summary, background material relating to the development of the Design which is not in dispute; Annexure D is an email dated 30 April 2015 concerning past testing of other drivers in which Mr Taylor appears to be requesting the return of tested drivers for his inspection and further study; Annexure E is an email from 15 January 2016 from Mr Taylor to Steve Daly, Technical and Quality Assurance Manager of the Requestor, which purports to indicate that the driver referenced as the ‘Torso’; Annexure F is an email dated 8 November 2016, (which I extract below at paragraph 38 of these reasons) showing an image of a driver which the parties referred to throughout the hearing as the ‘Torso Driver’; Annexure G is a copy of an email from an authorised licensee, dated 18 September 2015, which purports to show distribution of variously labelled drivers, ‘out to customers’ so they can be returned after 6 weeks, for testing purposes (the email does not present with any attachment); Annexure H is an email dated 28 May 2014 from Wayne Proud, Business Development Manager of the Requestor, suggesting that at times the Requestor’s authorised licensees provide their drivers to the public; Annexure I is an email chain from 24 January 2017 titled with the subject ‘screw independent third party testing’ between Mr Taylor and Mr Ramachandran in which Mr Taylor wrote ‘Any feedback on - “New” Torso MK25-100mm or 18:Series Drivers – “New” MK5-Driv-Torso- 50mm STUBBY design”; Annexure J is an email from 9 March 2017 from Mr Taylor to Mr Ramachandran and Mr Daly, similarly seeking feedback; Annexure K is an email dated 24 April 2017 from Mr Taylor to Mr Ramachandran where he wrote, ‘please find attached details as requested on the New Driver MK25-100-Torso’;5 Annexure L consists of various emails which are not of relevance; Annexures M to T are purchase order documentation for items labelled ‘18A-DRIV-M25-100’ and matching packing slips; Annexure U is a copy of a sales report from the Requestor for sales of products dated ‘23 November 2016 to 16 April 2017’; Annexures V to AB relevantly includes various customer orders taken by the Requestor from authorised installers as well as packing slips, all dated before the Priority Date; Annexure AC is a spreadsheet from Mr Daly which shows that, between 2010 to June 2012, products with the name ‘MK25 BH Series drivers’ were supplied to the Requestor; Annexure AD is a copy of an email and diagrams of several fasteners; Annexures AE to AG are blank; and Annexure AH appears to be an e-signature document for the declaration.
5 See Schedule 1 to these reasons.
19.Milligan-3 most relevantly supplements Ramachandran-2 by Annexures A to O. In summary these consist of emails invoices and packing slips and sales records concerning what is labelled as ‘18A- Driv-M25’ dated before the Priority Date.
Supplementary evidence
20.Taylor-2 seeks to respond to the EIR. Exhibits WAM 1 to WAM 3 seek to explain the contents of the email dated 8 November 2016 from Mr Taylor to Mr Ramachandran at Annexure F to Ramachandran- 2; Exhibit WAM 4 is a copy of an email with a purchase order dated 6 June 2017 from the Requestor to the Safe T Fasteners Pty Ltd; Exhibit WAM 5 is a copy of an email dated 24 April 2017 mentioning the ‘New Driver MK24-100-Torso’ with images; Exhibit 6 is a copy of an email dated 29 May 2017 advising ‘18A-M25-Torso-100 “New Driver” (18A-M25-Torso-D)’ was waiting approval before supply; Exhibit WAM 7 is a copy of the email from dated 18 September 2015, which is also at Annexure G to Ramachandran-2, sent to Mr Daly with the correct attachments showing the design referred to therein is unlike the Torso Driver, apparently showing that this email did not relate to the products asserted by the Mr Ramachandran in his evidence.
Legislative framework
21.The Registrar of Designs must examine any registered design if any person so requests.6 An examination involves consideration of whether a ground for revocation exists.
22.One such ground is that a design is not a registrable design. A design is a ‘registrable design’ if the design is ‘new and distinctive’ when compared with the prior art base for the design as it existed before the priority date of the design. The words ‘prior art base’ carry the meaning provided in s 15,7 which relevantly provides that the prior art base consists of designs publicly used in Australia and designs published in a document within or outside Australia.
23.Section 16 provides definition to the words ‘new’ and ‘distinctive’:
16 Designs that are identical or substantially similar in overall impression
6 Section 63(1).
7 Section 5, ‘prior art base’.
(1)A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2)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 (see section 19).
(3)Subject to paragraph 15(2)(c), the newness or distinctiveness of a design is not affected by the mere publication or public use of the design in Australia on or after the priority date of the design, or by the registration of another design with the same or a later priority date.
24.The factors to be considered in deciding whether a design is distinctive are found in s 19, which I set out below:
19 Factors to be considered in assessing substantial similarity in overall impression
(1)If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2) The person must also:
(a)have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii)if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d)have regard to the freedom of the creator of the design to innovate.
(3)If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4)In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
Prior Art Base
25.The following is relied upon by the Requestor as being prior art which it says destroys the newness and distinctiveness of the Design:
(1) the Torso Driver as appearing in an email dated 8 November 2016 as a publication (paragraph 38 of these reasons);
(2) the driver appearing in an email dated 24 April 2017 as a publication (Schedule 1 to these reasons);
(3) the Torso Driver as appearing in the 8 November 2016 email in sales of driver tools labelled as ‘18A-DRIV-M25-100’ (paragraph 38 of these reasons);
(4) the Torso Driver as appearing in the 8 November 2016 email, allegedly also in use by testing from around the date of the email (paragraph 38 of these reasons);
(5) the M25 Driver (Schedule 1 to these reasons); and
(6) the 312 Patent which was published on 26 June 2014 (Schedule 1 to these reasons).
Consideration
Interpretation of the Design
26.Before embarking on any comparison for the purposes of assessing newness and distinctiveness it is first necessary to consider the Design. The Requestor asserts that in making comparisons I should disregard all matter indicated in the broken lines and compare only the end portion of the product depicted in the representations in solid linework. If I am to do this then the Design might be considered identical, if not substantially similar in overall impression, to various distal end portions for driving products generally, irrespective of the total shape and configuration of, for example, the handles, stems and end portions as respective wholes. The Requestor supports this argument in part based on its interpretation of words of the product name, ‘driver bit for fastener’, which it views as indicating the end distal portion of the overall thing pictured in the representations. The Owner counters that this reading of the product name is not justified and that the design should be read as being the overall thing shown. If I interpret the Design as being for a portion and not the overall thing pictured, then the comparative exercise conducted may turn out to be quite different. That is, I would compare only the portion shown in the dotted lines to a corresponding element of any relevant prior art.
27.This argument appears to be a ‘partial design’ argument. These arguments before delegates of the Registrar have generally not succeeded.8 It does not appear possible under the Act to ‘claim’ less than the whole of a thing, unless that is a separable part permitting assembly and disassembly.9 The Australian system for designs differs in this respect to many overseas.10 Rather than a system of ‘claims’ which includes partial claiming of the visual features, it is possible for an applicant for a design application to provide a SoND which requires particular regard be paid to specific visual features when comparing designs.11 Whilst a physically separated part may be the subject of a design, the claiming of a portion of a larger whole is not possible. I read the representations as a whole and not in such a way as to completely disregard the matter shown in broken lines. I note that there nothing in the application or registration showing the element shown in solid lines is a separable element of the product and normally this would be depicted separately if such. There is nothing in the SoND or otherwise that determines the dotted lines or the solid lines are the subject of the SoND. I read the product name for the whole product which accords with how Mr Ramachandran’s own evidence has treated these kinds of products.
28.Accordingly, I will compare the Design’s appearance, as a whole product and as shown in the representations, yet I will have particular regard to the features mentioned in the SoND. There is a difficulty here because the language of the SoND does not seem to fit neatly with what is depicted. In having this particular regard, the Requestor asserts that only the parts depicted in the representations in solid lines should be considered. The SoND refers to the ‘shape and configuration’ of the thing as depicted in the representations and yet there is broken and solid lines. There is no clear connection with either broken lines or the solid lines and the SoND. I consider the SoND as having the effect such that I should have particular regard to the shape and configuration overall, regardless of broken or solid lines.
8 See, for example. GH PTM (n 2) [35]-[39].
9 Section 6.
10 By contrast, in the United States of America partial designs appear to have been considered as available in a case that concerned drill bits, see In Re Zahn 617 F2d 261 (CCPA 1980). See also, Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, Article 1(a), concerning the definition of ‘design’, and Registered Designs Act 1949 (UK), s 1(2), defining a design as the whole or part of the appearance of a product.
11 Section 19(2)(b).
Torso Driver prior art
29.I now turn to the prior art concerning use and publication of the ‘Torso Driver’.12 Comparison and quantum of disclosure
30.The Requestor relies on the image of the Torso Driver in an email dated 8 November 2016. It also relies on the email dated 24 April 2017.
31.In comparing the Design with the prior art, I must examine the designs side by side and with a studied comparison. I must consider the factors in s 19 and reach a conclusion as to whether the Design is substantially similar in overall impression to the design. I should consider the factors from the perspective of the informed user, which is one of familiarity with the product.13 Here, the informed user is a person who is familiar with driver bit for fasteners. The state of development of the prior art base is one important consideration when assessing distinctiveness. In short, a well developed prior art base suggest that smaller differences may be of consequence and a less developed prior art base may mean that more significant visual differences are required to avoid substantial similarity in overall impression. I consider the freedom of the creator of the design to be constrained only in that the product must fulfill the particular purpose of engaging with a screw or fastener head at its tip, of which there are a variety of types, and with a driver at its base. In this case there is a SoND, in respect of which I refer to my comments at paragraphs 26 to 28 of these reasons. Where only a part of the Design is similar, to an earlier design, I must consider the amount quality and importance of that similar part in the context of the design as a whole.
32.A threshold issue for every one of the potential citations concerning the Torso Driver is whether the objects pictured in the image even show something which can be considered comparable to the Design; this is sometimes termed the ‘quantum of disclosure’.14 The 8 November 2016 email shows almost all the visual features of the design. However, what is missing is a profile view of the tip or
12 Shown at paragraph 38 of these reasons.
13 GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, [15] (Burley J); Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743, [67] (Yates J) (‘Multisteps’).
14 Sam Ricketson, Law of Intellectual Property: Copyright, Design and Confidential Information (TR Online, 2022, as at 31 July 2023) [21.25].
end portion. The image is also not the best quality from which to glean details of the blades of the side portions.
33.The Requestor asserts that Taylor-1 acknowledges that the design labelled the Torso Driver, is the Design. It submits that Mr Taylor accepts this, referring to Taylor-1 at [34] and [35] and the email dated 8 November 2016. However, I do not consider the statements as unequivocal about this issue. The Requestor also referred me to the email dated 24 April 2017 in which Mr Taylor states, ‘[p]lease find attached details as requested on the New Driver MK25-100-Torso’.15 The attachment to the email contains the following image:
34.The Requestor asserts that ‘MK25-Torso-100’ is the Torso Driver. At the hearing and in its written submissions the Owner raised the quantum of disclosure as an answer to all of the citations concerning the Torso Driver. That is, there is not a sufficient amount of disclosure in this prior art to enable me to make a fair comparison between the designs and, in any case, what is disclosed is not substantially similar in overall impression. In particular, the Owner points to no depiction of: (i) the geometry of the distal end portion; (ii) whether the distal end portion is flat (or not); and (iii) whether the distal end portion has a centrally located socket (or not). These points raised by the Owner have force with respect to the issue of newness. I cannot conclude that the design is not new on the basis of this material.
35.As to making the comparison about distinctiveness, I cannot draw inferences around the symmetry of the features mentioned. I can reasonably draw the inference that the driver likely continues in the form circumferentially in appearance. However, it is not clear from the images provided what exact shape and configuration the tip and its sides take, including the grooving or socketing. As this material has been raised in the EIR as a core citation relied upon by the Requestor, the Owner has also had no formal opportunity to provide any countervailing representations showing what the products in the image of the 8 November 2016 actually look like at those portions. I also note that the Requestor itself has not provided such. Applying the principles of s 19 and making the comparison to the extent possible, I note the identicality or near identity in appearance from the
15 Ramachandran-2, [31] and Annexure K.
respective side views. My findings above on the missing portion of the product are applicable again here. This particular area of the Design appears to be of great importance to persons familiar with driver bits for fasteners. The Requestor’s own submissions concerning the 312 Patent and M25 Driver suggest as much. This element is important because the very function of the product is to interact and mate with a fastener. I consider an informed user would be one who would be conscious of at least how the driver would mate with a fastener or other such pin; they would likely closely examine the end portion at the profile. This is not a case where the informed user would not be likely to pay close attention to the area in question or where I could necessarily infer a symmetry into the prior art that is present in the Design. The prior art base is highly developed, so small differences in visual features are likely to be significant. Even after giving weight to the similarities that do exist, my opinion is that I cannot conclude that the Design is substantially similar in overall impression to the prior art in the 8 November 2016 email. For the same reasons, the same applies to the prior art in the 24 April 2017 email. Even if these instances of prior art were sufficient to make a finding of substantial similarity, they are tainted by other issues concerning confidentiality and gaps in the evidence which I explore further below.
Alleged sales of the Torso Driver
36.The Requestor asserts that there has been sale of the products made to the Design. In making this argument it relies on orders and packing slips: (1) dated 23 November 2016 for 100 ‘18A-DRIV-M25- 100’ and slip dated 24 November 2016; (2) dated 30 November 2016 for 100 of the same, and
picking slip dated 5 December 2016; (3) dated 31 January 2016 for 100 of the same and picking slip
dated 1 February 2017; (4) dated 1 March 2017 for 200 of the same, with picking slip dated 1 March
2017; (5) dated 8 March 2017 for 100 of the same with slip dated 9 March 2017; dated 27 March
2017 for 100 of the same, and slip dated 28 March 2017; and dated 26 April 2017 for 100 of the same with slip dated 27 April 2017. These total 800 pieces. Various orders from the Requestor’s own customers for products bearing the same code are provided, dated between December 2016 and April 2017.
37.In Multisteps Pty Limited v Source and Sell Pty Limited (‘Multisteps’), Yates J accepted the approach identified in Aspirating IP Ltd v Visions Systems Ltd,16 a patent case, that, ‘[t]he correct principle is
16 Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52, [200] (Besanko J)
that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago’.
38.To establish lack of newness or distinctiveness here, a threshold will be that the Requestor must establish that the ‘18A-DRIV-M25-100’ product code on the relevant invoices refers to the products made to the Design or to a design which is substantially similar in overall impression. In this regard, the Requestor presents no actual image of its own or any product that it has been provided. It says that I should read the product codes while considering an email from Mr Taylor to Mr Ramachandran dated 8 November 2016.17 I extract the body text and the relevant image from this email below exactly as it appears there:
Hi Ramesh
I have an order to complete for Dawn for Mk-100mm Drivers. Further to our discussion last Friday, please confirm that is OK to supply 18A-Driv-M25-100 Drivers as per photo below.
MK25 – “New Torso Design” – 100mm only design is supplied at the same costs as the older style. NO CHANGE in price or code to Crimsafe.
From testing this design will provide an increase in “life” of the product or performance will be better for impact tool users.
I understand only “positive” feedback come back from Endeavour, from Steve other licensees it was also favourable or no word
Shown below
Mk25-Torso-100mm
MK5A – Stubbby Torso – 50mm
17 Ramachandran-2, Annexure F.
39.The email begins with a statement made about a conversation about which the parties provide little direct evidence. It then mentions an order again without additional details other than it is for ‘M25 Drivers’, this could refer any of the drivers that up to that point had been supplied under that code or it could be a reference to, for example, any of the drivers shown in the ‘MK25 Driver Bit Register’. Next, Mr Taylor asks for confirmation that it is, ‘OK to supply 18A-Driv-M25-100 as per below photo below’. It is not clear whether this is a complete pivot from the topic of the order for Dawn or whether it is a general question about when the Requestor raises purchase orders they may be filled by a new product. It could also mean that in lieu of bits shown to the left in the image, the products on the right will be provided; or in lieu of some other product which at that time the product code 18A-DRIV-M25-100, the product of the left or the right would be provided. Then again, parts of the discussion may have been about the ‘MK25’ order for Dawn, noting that different product references are used in labelling the objects in the picture. In short, the email lacks sufficient clarity for me to draw the inference that the Requestor invites me to make. It appears to me that this is a request for confirmation that various products that had been in development were complete and that supply and orders could commence. That is, Mr Taylor was asking for confirmation that a product in development was supply ready. I think this email should be read in the context of other emails, including the 24 April 2017 email and 9 March 2017 email which indicate that testing results had not yet been reviewed by Mr Ramachandran until April 2017 for the Torso Driver. In the 8 November 2017 email, Mr Taylor then goes on to reference a ‘New Torso Design’ and label what is shown at the bottom the ‘Mk25 – Torso – 100mm’ and ‘MK5A – Stubby Torso – 50mm’. In the same breath that Mr
Taylor states ‘NO CHANGE in price or code to [the Requestor]’ he unhelpfully uses potentially three different references for the design pictured. The totality of the evidence suggests that there was at 8 November 2016 no final decision on what the product code was for the Design.
40.Exhibit 11 to Taylor-1, ‘identifies each purchase order, the laser (stamped or inked) engraving on each batch, an image of the driver and the date on which the purchase order was placed with the driver manufacturer’.18 The first relevant purchase recorded in Exhibit 11 is one mentioned as having been placed on August 2016, with a side view of a driver, matching that in the email dated 8 November 2016. In the notes column it states, ‘EMS AUF – failed QA Issues’. The Owner asserts this means it failed quality control. A second purchase is mentioned on October 2016, though there are notes stating, ‘Collection Taiwan – QA Issues – order cancelled – QC issues on inspection’. A third order is mentioned with the note, ‘Collected Taiwan Mar-17’. All this suggests that no Torso Driver was collected prior to March 2017 and for only a small quantity of 300 pieces. It was only after the Priority Date that orders increased to, for example, 13,539 in June 2017. I am aware that sometimes producers require a minimum order quantity, though I have no evidence of this in this case. Regardless, it is more probable than not that the small quantities in the first two failed orders were batches for testing or sample batches. I also note that after totaling the quantities in the relevant invoices for ‘18A-DRIV-M25-100’, it is improbable that these could have been filled, when the invoices are considered in light of the MK25 Bit Register which I discuss below.
41.Mr Ramachandran asserts that there were orders for what are titled ‘18A-DRIV-M25-100’ and that these are orders for the Torso Driver. The Owner answers this by asserting that the M25 Driver was offered for sale under the product code ‘18A-DRIV-M25-100’. An example of this is shown in a product catalogue dated from September 201319 in Milligan-1, as well as statements there made about sales commencing for products under that code from 2012, with quantities included.20 The ‘MK25 – Driver Bit Register’ shown in Taylor-1, itself shows an array of different drivers from September 2010 until June 2017. I agree with the Requestor that the mere fact that there were sales for products under the product code ‘18A-DRIV-M25-100’ does not mean that I should conclude this was for the Torso Driver. It is an understatement to say that the use of product codes by the parties
18 Taylor-1, [26].
19 Milligan-1, Annexure G, 121 and Schedule 1 to these reasons.
20 Milligan-1, [8]-[13].
has been haphazard and inconsistent. I accept at some point in time new products such as the Torso Driver may have become the ‘18A-DRIV-M25-100’ product. However, the Requestor does not present evidence which shows by when it had taken place. The Owner’s evidence suggests that this likely took place well into 2017 (and after the Priority Date).
42.I acknowledge that the 8 November 2016 email by requesting confirmation for supply suggests a willingness to do so and that there would be, ‘no change in price or code to [the Requestor]’. However, this does not establish that subsequent orders made using that code necessarily concerned the Torso Driver. The M25 Driver Bit Register suggests the opposite - that no sufficient amount of orders with the supplier had taken place as at that date. Tellingly, the Requestor files no intervening email or reply evidence from Mr Ramachandran to the effect of ‘We confirm supply is OK’. The Requestor just attempts to corroborate product codes based on this email. I also note that it was not until 24 April 2017 that Mr Taylor provided test results, relating to the Torso Driver, to Mr Ramachandran.21 It is unlikely that the Requestor would have placed orders, other than for perhaps a test sample, before it received confirmation that Torso Driver had passed external testing. On my assessment of the evidence, I consider it likely that some ongoing interactions and testing took place after the 8 November 2016 email. I otherwise cannot accept that this email is a conclusive key from which I should read the invoices relied on by the Requestor as evidencing sales and do not consider that it stands up to the careful scrutiny required concerning evidence of alleged use from before the Priority Date.
43.On the evidence before me I conclude that on the balance of probabilities, the relevant invoices before the Priority Date were for products other than the Driver Torso. To the extent there have been sales I find that these are likely to be small quantities for testing or sample purposes potentially subject to confidential fetter, which I discuss later. Regardless, I note again my findings that the Design and the images of the Torso Driver in evidence are not substantially identical in overall impression.
Are the 16 November 2016 and 24 April 2017 emails prior art?
44.Whilst these emails are dated before the Priority Date, for there to be a relevant ‘publication’, they must have been made available without restrictions as to secrecy and confidentiality and persons in
21 Ramachandran-2, Annexure K.
receipt of the details of the design must have been free to make use of the information disclosed.22 If the use and publication of the design is considered to have been made to persons the subject a requirement of confidentiality, then such disclosures should not be considered as having been made to ‘public’.
45.There is a long history concerning the principles at hand regarding confidentiality.23 The requirements of confidentiality can flow from contractual or other circumstances.24 Here, there is insufficient evidence of any relevant contractual relationship. To succeed on the other circumstances two integers must be satisfied to demonstrate confidential fetter. Firstly, the information must have the necessary quality of confidence about it; secondly, that information must have been imparted in circumstances importing confidence.25 There can be no obligation of confidence where the communication of the information is in circumstances which negative any duty of holding it confidential. What must be determined is whether the circumstances are such that any reasonable person standing in the shoes of the recipient of the information should have realised that upon reasonable grounds the information was being given in confidence, then this should suffice to impose on them the equitable obligation of confidence.26 In Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd,27 an owner conceded that the subject design was disclosed in emails, but the Court held that the images of the design did not constitute part of the prior art base because the emails in question were confidential as they were sent to the recipients in circumstances which imported obligations of confidence and as a consequence were not ‘published’ for the purposes of s 15(2)(b). Those circumstances concerned testing and product development. The alternative test is to ask, ‘[h]as
22 Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71 (Drummond J).
23 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd and Others (1948) 65 RPC 203, 215 (Lord Greene MR); Coco v AN Clark (Engineers) Ltd [1969] 86 RPC 41, 47‑50 (Megarry J) (‘Coco’); Ansell Rubber Co Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VicRp 7; [1967] VR 37, [40] (Gowans J); Australian Medic‑Care Co Ltd v Hamilton Pharmaceutical Pty Ltd [2009] FCA 1220, [631]-[637] (Finn J) (‘Australian Medic-Care’); and RLA Polymers Pty Ltd v Nexus Adhesives Pty Ltd and Others [2011] FCA 423, [42] (Ryan J). See also Key Logic (n 2) concerning particularly the disclosures around the law of registered designs and adopting these cases as explicating the relevant principles.
24 Coco ibid.
25 Coco (n 23) 47.
26 Coco (n 23) 48.
27 Key Logic (n 2).
confidential information been imparted for what was known, or ought reasonably to have been known, to be only for a particular purpose? If it has, its use must be limited to that purpose’.28
46.Here, the relevant circumstances are that there was a relationship between the parties. One of mixed nature concerning product development and commercial sales. The email of 8 November 2016 concerns a product which was a new product still in development, seemingly for an exclusive or specialised purpose of overcoming the various flaws in past designs for drivers, also supplied by the Owner to the Requestor. I consider this to have the necessary quality of confidence about it. There appears to have been a particular purpose to this email to the extent that it includes the image. The disclosure in Coco was also, ‘on a business-like basis and with some avowed common object in mind’.29 I do consider there to be a common goal here, outside of simply sales from the Owner to the Requestor. In Blank v Footman & Co the owner of a design showed it to a commission agent with exclusive sale rights for the goods. The owner did so before registering the design. That interest grounded a confidential character for the communication.30 In other cases certain basic requests for a sale, or purely commercial dealings, have amounted to circumstances other than those in confidence.31
47.
I read the 8 November 2016 email in light of an ongoing back and forth between the parties concerning the development of the Design. This includes testing reports sent by the 28 April 2017 email, with drawings that are noted as having been sent to Mr Ramachandran on 10 March 2017. Those drawings are clearly marked as remaining the property of the sender. There is also the email from 9 March 2022 which seeks feedback and notes that feedback is critical. I take this as being Mr Taylor seeking a final approval such that the design process has ended. From all the circumstances shown in the evidence it appears to me that the product development remained in progress and that Mr Taylor was both a designer and supplier of these products, engaging with the Requestor, especially Mr Ramachandran, about any potential improvements which were yet to be embodied in a final product for supply. The 8 November 2016 email even by itself appears to concern only potential purchases subject to the development having been completed. It was still possible and even likely
28 Coretell Pty Ltd v Australia Mud Company Pty Ltd [2017] FCAFC 54, [183] (Jagot, Nicholas and Burley JJ); Australian Medic-Care (n 23) [637] (Finn J).
29 Coco (n 23) 48 (Megarry J).
30 Blank v Footman & Co (1883) 5 RPC 653 (Ch) (Kekewich J).
31 Carflow Products (UK) Ltd v Linwood Securities (Birmingham) Ltd [1996] FSR 424 (Jacob J).
that the design be subject to future testing, and indeed it was. The release of products made to the design appeared to still be pending approvals of the Requestor. This email was not for instance a simple communication of a catalogue carrying supplier promoting its wares, nor a pure commercial case. Importantly, Mr Ramachandran knew the product was the subject of ongoing development and subject to approvals. The Requestor, and especially Mr Ramachandran as its technical lead, had an interest which makes them persons to whom Mr Taylor would naturally consult and seek approvals before endeavouring to put these goods on the market. The circumstances are such that any reasonable person standing in the shoes of the Mr Ramachandran would have realised that the information was being given to him in confidence.
48.Accordingly, my opinion is that the 8 November 2016 email was the subject of a reasonably expected confidential fetter or otherwise for the specific purpose of asking whether the design processes had come to an end. These conclusions equally apply to the email dated 24 April 2017. Accordingly, it is unlikely these emails form part of the prior art base.
Is any testing that took place prior art or otherwise subject to confidential fetter?
49.Even if I accept testing took place for the Driver Torso (which is not conclusively shown), I would have to consider whether that testing is also likely to have been the subject of confidential fetter.
50.The Owner asserts that based on the relevant tests there was a confidential fetter for any testing or trial and that tellingly there has been no direct evidence from any person who has actually witnessed the design in public use before the Priority Date. It was not directly communicated or made known that the Design was confidential in any express sense according to the evidence. There are also no clear practices of the industry in evidence. The Requestor asserts that there is no evidence showing that itself, the licensed installers or to the extent they witnessed the Design, any members of the public were, under an obligation of confidence in relation to the Design. Therefore, it is their charge that the Design was made available to the public to persons free in law and equity to use it. Mr Ramachandran does make a general assertion of availability to members of the public and also to licensed installers. This statement is not made by someone that would know this as fact and there is simply no specific evidence about any testing regime, other than hinting that some did take place.
51.Emails from 2014 and 2015, including Ramachandran-2 at Annexure H, contain some references to authorised installers selling drivers to customers of the Requestor. However, these are not specific to the Torso Driver. Further, the Requestor produces not a single instance of this occurring for products
made to the Design, nor for that matter a single direct statement from any installer about any specific driver they had tested for the Design. This evidence at best hints that sales may have taken place. There is some indication by emails from January 2017 and March 2017 at Annexures I and J respectively, where Mr Taylor seeks feedback on a product called, ‘“New” Torso MK25-100mm or 18:Series Drivers’. No image is provided in these emails. By the time of the 24 April 2017 email the Requestor had still not received engineering testing reports. Testing may have occurred. However, there is no explanation of exactly what or exactly who was involved in the testing referred to the 8 November Email.
52.In Barker v Associated Manufacturers (Gowns & Mantles) Ltd32 the Court found prior use where the owner had exhibited a dress made to the design in a room of their premises which was open to sales representatives. This was even though it was to a closed circle of persons who had access. There the circumstances were likely, ‘such that one may reasonably infer that the public was able to take advantage of and become acquainted with the features of the design’.33 In Multisteps a prior use argument was rejected because of the generality of the evidence and it was noted that the requestor there could have called direct evidence from the suppliers though did not.34 These cases show the serious evidential issues that can arise for allegations of prior use. I adopt an expectation here that the evidence strictly prove what is asserted as prior use. I should scrutinise evidence with care, especially on points not corroborated. As part of this, I note that the manner the EIR was filed means the Owner is formally at least shut out from providing evidence that might answer the EIR. When I subject the evidence to such scrutiny I cannot be satisfied of the relevant circumstances for how, where and by who, in front of whom, any testing took place for the Torso Driver. Accordingly, to the extent it is relied upon as prior art by the Requestor, that argument fails.
53.In Lazaros Minas v Brooklite Pty Ltd35 a trial of a patent was in a restricted kitchen area, not open to the public, by persons cognisant of that trial purpose, the delegate found there was no public disclosure. Here, the trial may have been on the premises of members of the public. The person to
32 (1933) 50 RPC 332 (Ch) (Maugham J).
33 Richsell Pty Ltd v Khoury [1994] FCA 1538, [135] (Kifel J); Skedeleski v Underwood (1990) 17 IPR 161, 170 (Lockhart J); Re Wolanski's Registered Design [1953] HCA 72 (Kitto J), involving use of a necktie support which was not able to be seen whilst in being worn in public which was not considered a relevant use.
34 Multisteps (n 13) [105].
35 [2016] APO 90 (Delegate Subbarayan).
whom initial disclosure was made was a senior person, Mr Ramachandran, and a technical expert. Thereafter, it may have been sent to the Requestor’s authorised licensees by the Requestor or the Owner. If there was testing of the Torso Driver, this is also likely to have been performed either in a private space by authorised installers or outside the view of any members of the public. There is no evidence otherwise. Regardless, I have formed the view that a person in Mr Ramachandran’s position ought to have known that there was confidential fetter and regardless, the disclosures for testing purposes are for that specific purpose. It would be reasonable to expect that any test samples would not be dealt with other than for testing. To the extent the Requestor argues that any authorised licensees knew of the design and tested it, it would need to show evidence of this. Mr Taylor would likely have requested return of tools so that they might be the subject of further study, as much as shown by email dated 18 September 2015 at Ramachandran-2, Annexure G. Even so, there is no reason that I should necessarily expect that authorised licensees would distribute what are likely to have been limited quantities of testing samples to customers. There is no evidence of such having had occurred for the Torso Driver, and authorised installers would likely have had had preexisting models available for those purposes, in that event. Accordingly, I draw no conclusion that members of the public would have been likely to view the Design and understand it in a manner which would pose issues for newness and distinctiveness.
54.On the balance of probabilities, I find that to the extent that there was testing of the Torso Driver, suggested in the 8 November 2016 or 24 April 2017 emails, I am not satisfied that it was in such a way as it made the visual features of the Design relevantly available to the public. Furthermore, I am satisfied on the balance of probabilities that to the extent any testing took place it is likely to have been subject to a reasonably expected confidential fetter.
M25 and 312 Patent
55.The Requestor asserts the Design is identical to or alternatively that it is substantially similar in overall impression to the M25 Design36 or the 312 Patent.37
36 The M25 Design appears to have taken a number of forms, the most relevant of which are mentioned in throughout extracts of Schedule 1 to these reasons. This variety of appellations is also suggested by the various tools contained in the ‘MK25 Driver Bit Register’ at Taylor-1, Exhibit 11.
37 See Schedule 1 to these reasons.
56.The Design should be compared to earlier designs, adopting the interpretation outlined at the paragraphs 26 to 28 of these reasons with each of the designs as respective wholes. When the overall products are compared in this way and taking account of all factors in s 19, the overall differences are clear. The stem and handle element appears completely different in shape. However, the distal end portion bares some similarities in shape. I have already said I view this end element as important from the perspective of persons familiar with these products. However, the overall shape differences provide a context of the whole design such that I do not consider any iteration of the M25 Design to be identical or substantially similar in overall impression. Similar reasons mean that I also do not consider the Design to be to be substantially similar in overall impression to the 312 Patent.
Decision
57.As I am not satisfied that there is a ground for revocation, I direct that a certificate of examination issue after the usual appeal period calculated from the date of this decision. In the event there is an appeal the certificate of examination shall not issue until the proceedings are discontinued or dismissed, or if there is a decision of the Court the Design should be treated in accordance with that decision.
58.Noting my findings around satisfaction on the evidence already before me I need not make a determination of the questions regarding the Owner’s supplementary evidence. I also need not deal with the arguments of the Owner concerning the EIR and whether it is properly in reply.
Costs
59.The Owner has been successful. Normally costs will follow the event. I have noted the manner that both parties have conducted late filings in the process. Of note to me seems to be that the Requestor failed to raise the Torso Driver as a potential citation until the EIR which was unnecessarily late in the proceedings and was the cause for attempted supplementary evidence. I also note that the Requestor could well have raised the Torso Driver evidence in the examination stage. I award costs against the Requestor in accordance with s 127 in the amounts set out in Schedule 3 of the Designs Regulations 2004 (Cth).
Benjamin Goldsworthy Hearing Officer Oppositions and Hearings Trade Marks and Designs 31 July 2023
Schedule 1
312 Patent
M25 Driver
Torso Driver
Images from 24 April 2017 email
Fastener
MK25 Driver Bit Register entry for ‘18A-DRIV-M25’
September 2013 catalogue reference (various M5 and M25 drivers)
0
14
0