‘Mere Failure’ No Excuse for Missed Convention Filing Deadline

Kmart Australia Limited v Joseph Joseph Limited [2011] ADO 2 (21 April 2011)

Designs Act 2003 – Extensions of time – whether ‘misapprehension’ or ‘ignorance’ of the law provides basis for an extension of the time to file a design application claiming convention priority from earlier foreign application

We have previously used the excuse that protection for industrial designs is provided by ‘design patents’ in some jurisdictions (most notably the US) to justify commenting on this blog in relation to decisions on registered designs matters.

In this case, we have two additional excuses.  Firstly, we do not believe that there has been any previous published decision in relation to an application for an extension of time under section 137 of the Designs Act 2003.  Secondly, the relevant provisions in the Designs Act are almost identical with those set out in section 223 of the Patents Act 1990, such that decisions under one act are likely to be pertinent to the other.  (Section 224 of the Trade Marks Act 1995 also includes similar provisions.)

Hearing Officer Heath Wilson was required to consider whether it was appropriate to grant an extension of time so that the applicant could belatedly (by 20 months) file two applications – for a chopping board and a bowl respectively –  in Australia claiming priority from earlier European Community Design Registrations.  The evidence provided on behalf of the applicant suggested that the reason for failing to file the applications in time was merely that the applicant was unaware that the designs were not protected in Australia.

In the absence of any earlier decisions under the Designs Act, the Hearing Officer looked to the corresponding principles applied under the Trade Marks Act 1995 and the Patents Act 1990 to conclude that ‘an “error or omission” needs to be something more than a mere failure to do the relevant act’, and that ‘a misapprehension or ignorance of Designs legislation does not constitute an error by itself.’ 

Accordingly, the request to extend the time for making the priority claim was refused, and the applications directed to proceed to registration with the original filing date of 24 March 2010.  They will, of course, be invalid due to the prior publication of the Community Design Registrations, and prior commercial use of the designs in Australia.

THE LAW REGARDING EXTENSIONS OF TIME

Subsection 137(2) of the Designs Act relevantly provides that:

The Registrar may, on application by a person concerned in accordance with the regulations, extend the time for doing a relevant act if, because of:
             (a)  an error or omission by the person, or by the person's agent; or
             (b)  circumstances beyond the control of the person;
the relevant act that is required to be done within a certain time is not, or cannot be, done within that time.

As already noted, this provision is similar to subsection 223(2) of the Patents Act:

Where, because of:

             (a)  an error or omission by the person concerned or by his or her agent or attorney; or

             (b)  circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

While there have been no prior decisions under the Designs Act 2003, it is well-established under the Patents Act (and similar provisions of the Trade Marks Act) that the basic requirements for the grant of an extension are:

1. the person concerned must have formed an intention, prior to the original deadline, to perform the relevant act;
2. a relevant and identifiable error or omission must have occurred; and
3. there must be a causal relationship between the identified error or omission, and the failure to do the relevant act in time.

THE APPLICANT’S ‘EXCUSE’

The circumstances leading to the application for an extension of time were set out in a statutory declaration of Sara Delpopolo of Axis Legal Pty Ltd, which was (initially) the applicant’s representative in Australia.  This declaration stated, inter alia, that:

The Applicant commenced discussions with Australian distributors to sell the products in Australia believing that the designs were properly protected in Australia.
...
At all material times, the Applicant believed in good faith, that its designs were in fact protected by either copyright law or the law of registered designs in Australia by virtue of its Community Design registration as they had not been advised otherwise.

As a result of due diligence conducted by our firm, it became immediately apparent that the Applicant’s design was not in fact protected in Australia and there had been an omission to apply for a convention design registration.
...
At no time did the Applicant intend to loose (sic) its intellectual property rights in and to the designs. …

Axis Legal also sent a ‘cease and desist’ letter to Kmart Australia Limited, before making enquiries with the Designs Office regarding the provisions for requesting extensions of time under the Designs Act.

Interestingly, by the time the matter came up for decision by the Designs Office, IP Australia was informed that the Applicant was no longer represented in Australia by Axis Legal.

EXTENSION REQUEST AND OPPOSITION

The Designs Office initially considered that there was no prima facie objection to the extension request, and it was advertised in the Official Journal.

Unsurprisingly, considering that it had been threatened with legal action, Kmart opposed the grant of the extension, leading to the present decision.

THE DECISION

The Hearing Officer found that:

1. there was no evidence that the applicant intended specifically to distribute its products in Australia, or that any plans to distribute would indicate an intention to maintain its overseas design registrations in Australia (at [19] and [21]);
2. ‘relevant case law indicates that an “error or omission” needs to be something more than a mere failure to do the relevant act’ (at [24]); and
3. a misunderstanding of the protection that would arise from a Community Design registration was the main reason for failing to apply for the registration of the designs in Australia, and a misapprehension or ignorance of Designs legislation does not constitute an error by itself.

The Hearing Officer was therefore not satisfied that there was an ‘error or omission’ that resulted in the failure to file design applications at the correct time.

The extension was therefore refused.

COMMENT

The decision is unremarkable in its reasoning, but for the fact that it is the first such decision issued under the Designs Act 2003.

However, it serves as a reminder that not everything that we might ordinarily regard as an ‘error’ or ‘omission’ constitutes the kind of event (or non-event) that may for a basis for the grant of an extension of time.  It must be more than mere failure, or simple ignorance.  A prior intention to perform the relevant act should preferably be evidenced.  And the error or omission must have a causal relationship to the failure to meet the original deadline.

In other words, you cannot just make this stuff up after the event with the benefit of hindsight as to what you should have done!

Tags: Australia, Designs, Extensions of time