A recent decision by the Australian Designs Office highlights an important issue for any third party considering filing a request for revocation of an Australian design registration on grounds relating to entitled persons under s 51 of the Australian Designs Act.
In Lyons Airconditioning Services v Kedron Caravans, Lyons sought to have design registration no. 201912935 in the name of Kedron revoked on the basis of Lyons’ claim that it was an entitled person in relation to the Design.
Lyons claimed that the Design was for a direct copy of a product they had been selling for approximately 2 years prior to Kedron filing its application and that their product was known to Kedron at the time of filing.
The Designs Office Delegate considering the matter noted differences between the earlier Lyons’ product and the product subsequently registered by Kedron. These differences were problematic for Lyons because to succeed under s 51 of the Designs Act, Lyons needed to show that the appearance of their earlier product was identical to the Design. The Delegate stated at paragraph 32 of the Decision:
The evidence filed simply does not support the proposition that the Requestor’s (ie. Lyons’) employees created the Design as it appears in the registered representations.
And at paragraph 33:
The fact that the Carafan [Lyons’ product] and the Design share a degree of visual similarity is not sufficient to establish entitlement. As discussed at  of this decision, evidence of entitlement should be in relation to the Design ….
As a result, Lyons’ efforts to have the Design revoked under s 51 were unsuccessful.
The decision highlights that if a third party pursues a revocation action on grounds relating to entitled persons under s 51, then they must show that they, or another third party, previously developed the product that is the subject of a registered design. It is insufficient to show they previously developed a product that is merely similar in appearance to the product the subject of the design registration in question.
Where a registered design is perceived to be a copy, a third party has the option to file a request for examination of the Design under Section s 63, even where the design has previously been examined. This would overcome the need to demonstrate that the registered design is identical to the earlier design, since a registered design may be found to lack distinctiveness over a similar (but not identical) prior art design.