A first in Australian intellectual property law occurred without much fanfare on
The first in Australian intellectual property law is that, as far as this author is aware, this was the first appeal to the Federal Court from a decision of a delegate of the Registrar of Designs that had gone on to be the subject of judicial determination. As such, the case is important primarily for setting out principles as to which party bears the onus of proof in such a proceeding. However, the case is also useful for:
- Confirming and reinforcing existing principles as to how matters such as "newness and distinctiveness" and "substantially similar in overall impression to another design" are to be looked at and assessed;
- The application of principles of obligations of confidentiality in respect of the disclosure of a design in a commercial context.
Background - Revoking the Registration of a Design
The Decision concerned an appeal under s. 68(6) of the Designs Act 2003 (Cth) (the "Act") from a decision of the delegate of the Registrar of Designs revoking the registration of a design in respect of a product called a "solar bollard"; Design No. 201012310, Registration AU332890 S (the "Design"). A solar bollard may be briefly described as a post with a solar-powered light source affixed on top. In this case, the subject matter of the Design was basically the visual features of the light source, being made up of the shape of the outer casing and visible internal features, such as a component described in the Decision as a "conical diffuser". An image of the Design (being the GEN II product) on the left side-by-side with the previous model (the
On
Mr Arieni subsequently conducted his business of developing, manufacturing and supplying solar lighting products by means of Key Wholesalers and Key Logic. Shortly after his resignation from
On
Unfortunately for Key Logic, the delegate of the Registrar of Designs found that the Emails had been communicated (published) to members of the Exlites CI Network not in circumstances where the recipients were under an obligation of confidence concerning the communications. As such, the delegate found that the registration of the Design should be revoked. The delegate's decision in that regard was published on
The Appeal to the Federal Court - Matters of Importance
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1. It was confirmed that the nature of an appeal from a decision of the Registrar of Designs is that of a hearing de novo - it is not an appeal in the usual sense. That is, the question for the court "to decide for itself de novo is the same question the Registrar's delegate was called on to decide" based on all of the evidence adduced in the Federal Court proceeding.2
2. This was the first proceeding to come before the Court in the way of an appeal under s. 68(6) of the Act - that is, an appeal against a decision of the Registrar to revoke the registration of design. As such, there were no direct authorities that addressed the question of which party bears the onus of proof in such a proceeding.3 It was determined that, as the question the Court is called upon to decide de novo is the same question the Registrar's delegate was called upon to decide on the basis of the contentions of the party that had called for the examination of the design (in this case, Sun-Wizard), Sun-Wizard continued to bear the onus of demonstrating on the balance of probabilities that the Design is not a registrable design. The Court made this determination based on the text of the provisions of the Act itself - His Honour found it unnecessary to examine authorities that addressed somewhat similar appeal provisions in the Trade Marks Act 1995 (Cth) or the Patents Act 1990 (Cth) that might be thought to provide analogical guidance. In short, it was determined that Sun-Wizard, being the true moving party agitating for revocation, bore the onus of proof of demonstration that the Design is not a registrable design. However, in respect of whether the Emails sent by Mr Arieni were not published by reason that the Emails were received by recipients in circumstances that gave rise to an obligation of confidence, Key Logic bore the onus of proof. Again, that is because Key Logic was the "moving party" in respect of that contention.4
3. The decision endorsed the principles espoused in earlier cases as to the factors referred to in s. 19 of the Act to be taken into account when assessing whether a design is substantially similar in overall impression to a design forming part of the prior art base. As such, the approach taken in such cases as Review 2
4. As to the issue of whether the Emails were received by the recipients in circumstances giving rise to an obligation of confidence, His Honour found it determinative that the Emails were sent in circumstances where:
(a) The Emails were sent to a limited group of recipients (termed a "cohort") who formed the
(b) The information conveyed by the Emails (at least in respect of the design of the new product) was inherently confidential being a product still under development and which was ultimately intended to be commercialised;
(c) The Emails and the information contained therein were provided to the members of the CI Network solely in their capacity as members of that network and solely for the purposes of that network as the information went to features of a product still under development and was put to the members in order to obtain their opinions about the product.
As such, His Honour found that the members of the CI Network fell under an obligation of confidence to maintain the confidentiality of the information contained in the Emails until the product was in its final form and in a position to be promoted to the public at large. In making this finding His Honour explicitly stated that his analysis was "entirely consistent with the principles reflected in
Interestingly, a rather "pro forma" and generic confidentiality footer to the Emails - see para. [282] of the Decision for the wording - was not regarded as being in any way determinative of the character of the information contained in the Emails or of the circumstances in which the Emails were sent or received. Rather, His Honour regarded that footer as merely being "a cognitive cue of some importance to members of the cohort".7 suffice it to say, such a footer would not likely, by itself, be sufficient to impart an obligation of confidence on an intended recipient to an email.
Result
Key Logic was entirely successful in its appeal and the decision of the delegate of the Registrar of Designs was set aside. His Honour found that the Design (being the design of the GEN II model) was "new and distinctive" when compared to the prior art base which, in this case, was represented by the earlier
Addenda
* Bennett & Philp Lawyers acted for Key Logic in the Federal Court proceedings, with Mr Ben Fitzpatrick of Counsel.
** Insightful readers may have already noted that, given that the priority date in respect of the Design was
Footnotes
1
2 Paras. [5] and [6] of the Decision.
3 Para. [33] of the Decision.
4 Paras. [33] to [42] of the Decision.
5 Paras. [21] to [23] of the Decision.
6 Para. [284(18)] of the Decision.
7 Para. [284(16)] of the Decision.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
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