The validity of an Australian design registration requires that the registered owner is properly entitled to the design rights. The Australian Designs Office decision in Manuel Canestrini v Ilan El demonstrates that a failure to satisfy this requirement can result in revocation of a design registration. The decision also highlights that a request for revocation will be successful only if the lack of entitlement challenge is supported by sufficient evidence.
The decision concerned Australian Design Registrations 201911962 and 201911963 (the ‘962 and ‘963 Registrations). The Registrations were applied for by Ilan El (the ‘Owner’) in April 2019 and were subsequently registered in early July 2019 with the Owner recorded as the sole designer. A request for revocation of the Registrations was made by Manuel Canestrini (the ‘Requestor’) in late July 2019.
The Owner and the Requestor had been business partners in a business known as ‘Formacy’ from March 2017 until February 2018 when the Owner resigned from the partnership. Part of the Requestor’s evidence was the Owner’s resignation email which noted “As for the designs that we’ve developed and the products produced to date – These are all yours”
The Owner did not contest or participate in the proceedings although the Delegate noted that the onus remained with the Requestor to establish, on the balance of probabilities, that the Owner was either not entitled or not solely entitled to the design.
The ‘963 Registration related to a ‘Cannon Vase’ design consisting of a cannonball object within a cannon-shaped vase seated in a base.
The Requestor’s evidence demonstrated that he had conceived and finalised this design in late 2017 in his capacity as product designer in the Formacy business. The evidence included dated email exchanges demonstrating that the Requestor had conceived of the visual appearance and included alternative and final design versions circulated by the Requestor to other partners of the business.
There was no evidence the Requestor had any contractual relationship with the other partners of the business. It was also noted that conception of the ‘963 design occurred during the period of the partnership and so the Owner’s resignation email disclaiming designs made during the partnership was relevant.
The Delegate was satisfied based on the evidence that the Requestor was the only person entitled to be the registered owner of the ‘963 design and the ‘963 Registration was therefore revoked.
The ‘962 Registration related to an alternative version of the ‘Cannon Vase’ having a visually different base and a visually different connection between the vase and base.
In contrast with the evidence submitted in respect of the ‘963 design, the Requestor’s evidence with respect to the ‘962 design was undated and no supporting material was provided to indicate when the design had been conceived. The Owner’s resignation email was therefore found not to disentitle the Owner from the ‘962 design in the absence of evidence that the design was conceived during the partnership period.
Crucially, the Requestor’s evidence of design conception included images of several different vase designs but none having the same visual features as the ‘962 design. The Delegate conceded that the vases in the Requestor’s evidence resembled the ‘962 design but noted mere visual similarity is, in isolation, insufficient to establish entitlement. It was also noted that a new design may combine visual features from existing designs and so even if the Owner had taken and combined visual features from the Requestor’s earlier designs, the Owner may nonetheless be entitled to the ‘962 design.
On the basis of the evidence provided, the Delegate was not satisfied that the Requestor was a designer of the ‘962 design and the request to revoke the ‘962 Registration was declined.
 Manuel Canestrini v Ilan El  ADO 2 (25 June 2020)