Trade Mark News & Information

Trademark Lawyer Sydney – Federal Court – Design Appeal

Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd [2021] FCA 208 (12 March 2021)

Successful appeal by Key Logic from a decision of the Registrar of Designs revoking its design for a solar bollard.

On 16 February 2015 Sun-Wizard filing a request under s63 for the Registrar to examine the registered design and, by decision made on 17 October 2017, the Registrar’s delegate found a ground for revocation existed under s65(2) namely the communication of a pre-release data sheet in an email sent on 3 May 2010 had published the design prior to its 7 June 2010 filing date resulting in it not being new and distinctive.

In the appeal, Sun-Wizard also relied on an earlier version of the solar bollard (the GENI design) being part of the relevant prior art base. Sun-Wizard retained the onus of demonstrating, on the balance of probabilities, that the design is not a registrable design. However, Greenwood J was not satisfied that any of the material relied upon as being in the prior art base disclosed the features of shape, pattern or ornamentation of a conical shaped reflector or diffuser as appeared in the registered design. Consequently, his Honour was not satisfied that any of the material relied upon by Sun-Wizard had the effect of rendering the visual features of the registered design neither new nor distinctive.

Key Logic agreed that the designs in the 3 May 2010 email and an earlier 21 April 2010 email included representations of the registered design, but argued those emails did not constitute publication of the registered design because the recipients had a special commercial relationship giving rise to an obligation of confidence. Key Logic carried the onus of demonstrating the obligation of confidence. Greenwood J accepted that the information in these emails was inherently confidential and the emails were sent to a cohort of individuals who had joined the so called CI Network entitling them to financial advantages and in circumstances where there was an obligation to maintain that confidence until the product could be promoted to the public at large. Hence, his Honour concluded that there was no prior publication of the registered design. In reaching this finding, his Honour considered a standard confidentiality footer accompanying the emails operated as a cognitive cue but, by itself, was not determinative of the character of the information communicated in the emails.