Designs

Designs Act 2003 review

In May 2012, ACIP was directed to investigate the effectiveness of the Designs Act 2003 which commenced operation on 17 June 2004.

Now ACIP has published an issues paper.

Chapter 3 sets out 22 questions ACIP is seeking answers to. However, ACIP does also say:

the main purpose of the paper is to provoke discussion and any other relevant comments are very welcome.

The topics identified (so far) for comment include:

  • Duration of design protection
  • Grace period
  • Statement of Newness and Distinctiveness
  • Publication
  • Unregistered Designs Rights (UDRs)
  • Harmonisation with international practices (i.e. The Hague Agreement)
  • Border Protection Measures
  • Design overlap with other IP rights
  • Threshold of registrability
  • Confusion regarding the registration/publication/examination process;
  • The (potential) impact of new technologies, such as 3D printing technologies and graphical user interfaces.

There are some interesting statistics:

  • about 6,000 design applications filed each year (the Germans do 50,000+ a year, the Chinese are a whole order of magnitude bigger)
  • 90% proceed to registration (wonder how the other 10% manage to stuff up filling in the form?)
  • 20% of registrations have examination requested (so you can sue someone for infringement or try and revoke them)
  • 10% of those examined fail (i.e., 90% get certified)

Table 4 sets out the classes in which most applications are being made and Table 5 outs those who file the most applications.

The closing date for submissions is 31 October 2013.

Download the issues paper from here (pdf).

Lid dip: Janice Luck

Designs Act 2003 review Read More »

Another designs case

Well, a patents and designs case, but really it’s a case about entitlement: Kenny J has upheld the validity of patents and registered designs for “beer taps” which one company in the Fosters group – Foster’s Group Ltd – applied for “most likely [by] mistake”[1] as one of its subsidiaries, Fosters Australia, was the owner.

Fosters Australia commissioned another party to design some new beer taps for it, on terms that it would own the resulting IP.

When the applicatins for the patents and designs were filed, however, they were filed in the name of Fosters Group Ltd, Fosters Australia’s parent and the holding company of the group.

When the mistake was discovered, Fosters Group assigned everything to Fosters Australia. By then, however, the designs had been registered in Fosters Group’s name, although innovation patent applications were still pending.

Fosters Australia has sued Cash’s for infringing its patents and designs. Cash’s defences asserted invalidity on the basis, amongst other things, that Fosters Group was not an entitled person or the grant was obtained by fraud, false suggestion or misrepresentation.[2]

Kenny J rejected the attack on the patents on the basis that s 29 did not require an applicant for the patent to be the entitled person or someone claiming through him or her; it was necessary only that the patent was granted to someone who qualified under s 15. Kenny J further held that Fosters Group could assign the benefit of its applications to Fosters Australia.

Similar reasoning would apply to the designs s 21 and s 13, but the designs were already registered before Fosters Group assigned its rights to Fosters Australia. However, Kenny J found in circumstances that Fosters Group held the applications and registrations on constructive trust for Fosters Australia.

Patentology makes the point that, while all’s well that ends well, care needs to be taken in deciding who should make the application before it is filed.

Foster’s Australia Limited v Cash’s (Australia) Pty Ltd [2013] FCA 527


  1. [2013] FCA 527 at [127].  ?
  2. Patents Act 1990 s 138(3) and Designs Act 2003 s 93(3).  ?

Another designs case Read More »

A designs case!

Jacobson J has found that Bluescope’s “Smartascreen” metal fencing panel infringed Gram Engineering’s Registered Design No. AU 121344 for a fencing panel as an obvious imitation. Perhaps the most interesting finding, however, is why the Smartascreen was not a fraudulent imitation.

image002

vs

Smartascreen
Smartascreen

Gram’s design was registered in 1994, so this is an “old Act” case (invalidity here and infringement here). [1] At the time, it was the first fence panel to feature a symmetrical design: looking the same no matter which side of the fence it was viewed from and, as a result, it was a roaring success capturing some 40% of the market. One interesting aspect of the case is that Bluescope’s Smartascreen product was introduced in 2002. Although Gram Engineering knew about it from around its introduction, it did not commence infringement proceedings until 2011 – after the registered design had expired in 2010.

Bluescope’s attack on validity failed. [2] First, the prior art on which Bluescope relied were for roofing or siding panels, not fence panels, and so not relevant articles. Moreover, the prior art and the registered design had the same general “z-shape”, but were intended to be used horizontally (“weatherboarding) rather than vertically and none had the same combination of 6 panels with the same proportions and angles as the registered design. Hence, while some features may have been present in some of the prior art, none of the prior art included all the features and the registered design looked distinctively different.

Jacobson J then found that the Smartascreen was an obvious imitation: the dominant feature was the same sawtooth look with the (unique) 6 panel frame in the same proportions and with the same angle.

Fraudulent imitation

On this question, Jacobson J found that Bluescope:

  • knew that the design was registered;
  • knew that Gram had achieved runaway commercial success
  • was trying to design a “Gram lookalike”
  • had come up with a number of different symmetrical designs which were different to Gram’s design
  • and had adopted a standard panel size of 762mm (which matched Gram’s physical embodiement) instead of the more typical 820mm panel size.

In these circumstances and given his Honour’s finding of striking similarity, Gram Engineering argued it was inconceivable Bluescope had not copied Gram’s design and so a finding of fraudulent imitation should follow.

However, Jacobson J considered that fraudulent imitation required a finding that Bluescope’s design had been deliberately copied from the registered design. This may prove to be a considerable narrowing of the requirement in Polyaire that the accused product (at [17]) be based on or derived from the registered design or (at [19]) make use of the registered design.[3] It was, however, decisive. His Honour was not prepared to find that either of the key designers who came forward did deliberately copy. It was here that Gram Engineering’s delay in bringing proceedings came back to haunt it. As his Honour explained at [382]:

It is a conclusion which I have reached with some reservation because the striking similarities to which I referred above were not satisfactorily explained in Bluescope’s evidence. I have no doubt that the drawing of 17 November 2000 was designed to look something like the Gram product. It was, as Gram submitted, designed with an eye to the GramLine sheet. However, it is plain that Mr Field was involved in the process. This appears from the concluding remarks of his memo of 15 November 2000. Ultimately, it is his absence from the witness box which precludes me from reaching the view that the process of designing a Gram lookalike was one which entailed copying the Gram design.

The Mr Field in question was unable to give evidence at this stage in view of his advanced age (being retired) and illness.

If his Honour had been prepared otherwise to find fraudulent imitation, however, the fact that it had obtained advice that its product did not infringe the registered design would not have saved it.

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508


  1. The test for validity in Designs Act 1906 s 17(1) here and infringement, s 30, here.  ?
  2. An example of the prior art relied on:
    One of the prior art examples
    One of the prior art examples

     ?

  3. Indeed, at [35] the High Court said:

    “…. The kind of fraud that the Act seeks to remedy is closer in kind to, but is still not entirely analogous with, equitable fraud, which, for its establishment, does not require that an actual intention to cheat must always be proved; proof of misconception of the extent of a person’s obligation, to act or to refrain from acting in a particular way, may suffice”.  ?

A designs case! Read More »

Raising the Bar update

Following the conclusion of consultations about the draft Intellectual Property Legislation Amendment Regulations (the regulations to implement the “Raising the Bar” amendments), IP Australia has published a document outlining the outcomes of the consultation process.

The document outlines what IP Australia is proposing to do/implement in relation to:

 

Schedule 1

 

  • preliminary search and opinion
  • search fee
  • priority date
  • other things

 

Schedule 3

 

  • filing of evidence in oppositions
  • extensions of time to file evidence
  • confidentiality
  • fees for notice of intention to defenddefence (TM oppositions) (lid dip: Andrew Sykes)
  • cooling off period for patent oppositions (not in the public interest)
  • dismissing trade mark oppositions for inadequately particularised grounds
  • document service
  • no changes to basis for adding grounds / particulars to a notice of opposition
  • no change to costs provisions

 

Schedule 4

 

  • suspension regime for patent / trade mark attorneys will be retained

 

Schedule 5

 

  • customs seizure: regulations will be amended to require importers to provide full name, telephone number and address for service in ‘claim for release’ forms
  • email address will not be made mandatory

 

Schedule 6

 

  • applicants for patents will have 2 months to respond to a direction to request examination after examination has been deferred
  • acceptance period after 1st report on patent application has been issued will be reduced to 12 months
  • “IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form.” Applicants for an innovation patent will still need to provide the statement when filing the application
  • The Commissioner / Registrar will retain discretion to decide whether hearings should be decided on the papers without oral presentation
  • Apparently, there are technical corrections that will be implemented to

Links to:

 

Public Consultation Update papers

IP Australia’s Press Release

 

 

IP Australia’s helicopter summary of Raising the Bar, more links and IP Australia’s summaries for patents, copyrighttrade marks and designs.

Patentology looks at the good news for SMEs and some of the things rejected, here.

Raising the Bar update Read More »

Tobacco Plain Packaging reasons

Having previously announced the conclusion that the Tobacco Plain Packaging laws were valid, today the High Court published their reasons.

6 of the judges, Heydon J dissenting, ruled that s 51(xxxi) did not apply because there was no “acquisition” of the tobacco companies’ intellectual property rights. It was true that the ability, or rights, of the tobacco companies to use their intellectual property rights was severely curtailed, if not extinguished. That was insufficient to constitute an acquisition in itself. But, the Tobacco Plain Packaging legislation did not appropriate those rights for use by the Commonwealth.

As a result, it was unnecessary to consider the Commonwealth’s further argument that, if there were an acquisition, it was justified and reasonable in the circumstances.

JT International SA v Commonwealth of Australia [2012] HCA 43

Tobacco Plain Packaging reasons Read More »

Raising the Bar regulations

IP Australia has published the first tranche of draft regulations to implement the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (most of which comes into force on 15 April next year).

This tranche includes the draft regulations for:

  •  Schedule 1 – Raising the quality of granted patents,
  • Schedule 4 – Assisting the operations of the IP profession, and
  • Schedule 5 – Improving mechanisms for trade mark and copyright enforcement.

Comments should be submitted by 21 November 2012.

Download all the gory details, including draft EMs, here.

Lots have people have had a go at trying to explain some, or all, of the ramifications of the Act. If you don’t want to Google, or bing, or duck duck go, the EM can be found on Parliament’s site here and the Bills Digest prepared by the Parliamentary secretariat is here.

Raising the Bar regulations Read More »

Tobacco plain packaging

Quote from the High Court:

At least a majority of the Court is of the opinion that the Act is not contrary to s 51(xxxi).

Reasons (which may explain that rather cryptic quantity) to follow later.

So, by 1 December 2012, all retail cigarette packs in Australia will look something like this. – the colour is officially described as Pantone 448C.

Tobacco Plain Packaging Act 2011

Tobacco Plain Packaging Regulations 2011

Tobacco Plain Packaging Amendment Regulations 2012 – extending regime to cigars and tobacco pouches.

On the global front, Ukraine, Honduras and Dominican Republic have brought complaints against Australia before the WTO dispute resolution process and, so far, Brazil, Canada, El Salvador, the European Union, Guatemala, Indonesia, Nicaragua, New Zealand, Norway, the Philippines, Uruguay and Zimbabwe have joined in the consultations.

So far as I can work out, the arbitration between Philip Morris and Australia under the 1993 Agreement between the Government of Australia and the Government of Hong Kong for the Promotion and Protection of Investments has reached the stage where the panel of 3 arbitrators has been established.

Tobacco plain packaging Read More »

The Raising the Bar bill comes alive

The Raising the Bar bill comes alive Read More »

ECJ’s first case on Registered Community Design

ECJ’s first case on Registered Community Design Read More »

The Raising the Bar Bill

Senator Carr introduced the Intellectual Property Laws (Raising the Bar) Bill 2011 into Parliament today.

Press release

Download the text of the Bill and EM from here (choose your own format).

You will remember that (according to the Press Release) the main objects of the Bill include:

  • raising patent standards to ensure Australian innovators are well placed to take their inventions to the world;
  • increasing penalties for trade mark counterfeiters;
  • improvements to border security measures for goods that infringe copyright and trade marks;
  • providing free access to patented inventions for researchers; and
  • cutting red tape and delays when seeking an IP right.

While there have no doubt been modifications to the text of the Exposure Draft (and Patentology flags a big change to the transitional provisions for the new patentability standards), you can get a very good feel for what the various parts of the Bill are trying to achieve:

in relation to patents from Dr Summerfield’s 8 part series over at Patentology:

  1. Part 1: inventive standard
  2. Part 2: usefulness
  3. Part 3: provisional specifications
  4. Part 4: enablement
  5. Part 5: claims supported by description
  6. Part 6: experimental use
  7. Part 7: miscellanea including standard of proof
  8. Part 8: transitional

Kim Weatherall also commented on a number of aspects, exploring in particular the (proposed) trade mark criminal offences.

You do need to bear in mind that these commentaries were on the text of the Exposure Draft and it was intended that anomalies identified through the Exposure Draft would be corrected in the Bill so, as I have already noted, there will be changes. Nonetheless, these comments should give you a good fell for what was being intended and issues that might be thrown up.

As you will see from the commentaries on the exposure draft, there are a host of issues to be considered. Time doesn’t permit anything but a cursory attempt on a couple of points here:

Item 113 of Sch 6 will replace the current s 41 of the Trade Marks Act (requiring a trade mark to be capable of distinguishing) with a new provision intended to reverse Blount and ensure that there is a presumption that a trade mark is registrable. It does this by requiring the Registrar to be satisfied that the trade mark is not capable of distinguishing before the Registrar can reject the application on this ground.

So clause 41(2) says “A trade mark is taken not to be capable of distinguishing … only if ….”

(Now I look at it, I wonder how long before it will be before someone tries to argue that “taken not to be capable of distinguishing” means something different to (and less than) “is not capable of distinguishing”. Oh well. Surely that one would be dispatched over the fence for six?)

While the Bill does seek to change the standard of proof against patent applications and patent oppositions from the existing “practically certain to fail” or “clear” type standard to the usual “balance of probabilities (see e.g. items 14 and 15 of Sch 1), no such amendment is proposed for trade mark oppositions. Therefore, the current state of uncertainty on this issue will continue (contrast e.g. Hills v Bitek at [43] – [55] to Sports Warehouse v Fry at [26] – [40]) , even though the school of thought favouring the “practically certain” or “clear” standard was imported from the Patents Act.

The bill will also introduce a whole new regime of oppositions to the registration of trade marks.

Item 18 of Sch. 3 will replace s 52 so that there is an obligation to file a Notice of Opposition which the Registrar, not the opponent, will serve on the applicant. Item 19 will introduce a new s 52A. This will require an applicant to file a notice of intention to defend or the application will lapse.

According to the EM, the regulations (when they are promulgated) will include power for the Notice of Opposition to specify the particulars of the grounds of opposition. The EM explains:

Opponents are currently required to state the grounds on which they intend opposing an application when they file their notice of opposition. However, they are not required to set out the particulars of those grounds. Frequently, this means that the opponent sets out all possible grounds, whether or not they have any intention of relying on them. As a result, the trade mark applicant may be faced with a number of grounds to deal with and no indication of which are key to the opposition until late in the opposition proceedings and sometimes not until the hearing

makes it difficult for the applicant to prepare their case. It also increases costs as the applicant is obliged to prepare a case in response to all grounds raised in the statement of grounds, including those on which the opponent may no longer rely.

The amendment addresses this problem by allowing for regulations to be made to require the opponent to file a statement of particulars of the grounds on which they intend to oppose. This will help focus oppositions earlier, reducing costs and unnecessary effort for the applicant.

The EM talks of the regulations conferring a power to require particulars. Whether this will be a discretionary power to be exercised on a case by case basis or an obligation on all opponents will need to await the terms of the regulations themselves. For example, the EM on items 24 and 25 states that opponents will be required to file both statements of grounds and particulars and  the last paragraph of the EM on item 17 states that the particulars will be required to be filed within 1 month of the filing of the Notice of Opposition.

The regulations will also apparently include a power to amend the statement(s) of grounds and particulars. However, the EM on items 24 and 25 states:

The regulations will only permit the opponent to amend the statement of grounds and particulars under tightly controlled circumstances.

The Federal Magistrates Court will get original jurisdiction in matters under the Designs Act and the Trade Marks Act alongside its existing original jurisdiction in copyright and (what used to be called) trade practices matters.

 

 

The Raising the Bar Bill Read More »