WHEELAHAN J:
1 These reasons for judgment relate to a pleadings dispute that has arisen between the parties. The disputed application before the court is an application by the respondent for leave to file and serve a further amended statement of cross claim, together with an amended notice of cross claim.
2 The applicant is the owner of four certified designs registered under the Designs Act 2003 (Cth). The four designs are for shovels, and bear the registration numbers 350501, 350502, 350503 and 350504. The applicant alleges that since at least September 2013, it has sold products embodying these registered designs to wholesale and retail customers.
3 The applicant alleges that from at least 12 March 2019 the respondent has infringed the applicant's registered designs by engaging in infringing conduct corresponding to that identified in s 71(1) of the Designs Act. The applicant alleges that the infringements relate to shovels that embody a design that is identical to, or substantially similar in overall impression to, the applicant's registered designs. The applicant alleges that shovels with the following product names of the respondent correspond with its designs -
(a) "Post Hole Shovel" - which corresponds with the 350501 design;
(b) "Plumber's Shovel" - which corresponds with the 350502 design;
(c) "Trenching Shovel" - which corresponds with the 350503 design; and
(d) "Shifting Shovel" - which corresponds with the 350504 design.
4 The respondent denies that it has infringed the applicant's registered designs. In addition, the respondent has filed a cross claim by which it seeks an order that the applicant's registered designs be revoked pursuant to s 93 of the Designs Act, on grounds including that the registered designs were not registrable designs for the purposes of s 15 of the Designs Act. The principal claim is that the applicant's designs were not new and distinctive when compared to the prior art base for the designs. Section 15 of the Designs Act includes sub-s (2), which sets out what constitutes the prior art base -
15 Registrable designs
(1) A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
(2) The prior art base for a design (the designated design) consists of:
(a) designs publicly used in Australia; and
(b) designs published in a document within or outside Australia; and
(c) designs in relation to which each of the following criteria is satisfied:
(i) the design is disclosed in a design application;
(ii) the design has an earlier priority date than the designated design;
(iii) the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
5 The determination of whether the design is both new and distinctive is the subject of other provisions of the Designs Act, namely ss 16, 17, 18, and 19. Under s 16(2), a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base. Under s 19(1), in determining whether a design is substantially similar in overall impression to another design, more weight is to be given to similarities between designs than differences, and regard must be had to several other factors specified in s 19(2) and (3). In making a decision by applying the requirements of sub-ss 19(1) to (3), s 19(4) requires the application of a construct, namely the objective standard of "a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates", which is defined as "the standard of the informed user". The informed user has been adopted from European design laws, and joins the list of other hypothetical persons who have been recruited by the law and by reference to whom objective standards are identified: see, Healthcare at Home Ltd v The Common Services Agency [2014] UKSC 49; 4 All ER 210 at [1]-[4] (Lord Reed JSC); ALRC 74 at [5.17]; LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; 80 IPR 85 at [57] (Gordon J).
6 Relevant to the allegations that the respondent seeks to advance by its cross claim are -
(1) designs publicly used in Australia; and
(2) designs published in a document within or outside Australia.
7 Establishing that a design has been published in a document for the purposes of s 15(2)(b) does not require proof that the document has been read and comprehended by any person. The concept of publication is different from that understood in other areas of the law, such as defamation, where tortious publication does not occur until a defamatory imputation is comprehended by a person. For the purposes of s 15(2)(b) of the Designs Act, it is sufficient if the documentary material was publicly available, even if there is no disclosure to any individual member of the public: J Rapee & Co Pty Ltd v KAS Cushions Pty Ltd [1989] FCA 606; 90 ALR 288 at 297 (Gummow J). For a document to constitute prior publication, it should enable a reader from a fair perusal of the material to be able "at least to see the design in his or her mind's eye, and the design or something substantially the same as the design should be disclosed with reasonable clarity": J Rapee & Co Pty Ltd v KAS Cushions Pty Ltd at 297 (Gummow J), citing Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1957] RPC 239 at 244 (Lord Evershed MR).
8 The Designs Act contains no definition of "publicly used". The text of s 15(2)(a) shows that the public use that is referred to is the use of the design itself. Further, because the Designs Act protects visual appearance and not function, the "use" is not confined to the public deployment of a product that embodies the design for its intended purpose. One might think that a guide to what may be included as a "use" of a design is to examine the exclusive rights of the owner of a registered design in sub-ss 10(1)(a) to (e) of the Act: cf s 95(1) in relation to the use of a design for Crown purposes. Doing one or more of the things referred to in s 10(1) might constitute a public use of a design if sufficient material features of the design are thereby publicly disclosed. However, the exclusive rights in s 10(1) have a flavour of trade and commerce, and in enacting the Designs Act 2003, Parliament did not adopt a recommendation of the Australian Law Reform Commission that prior use should be limited to use of the design in commerce. The Law Reform Commission described the previous position under the Designs Act 1906 (Cth) as being that prior use "basically extends to any disclosure of the article embodying the design to the public or individual members of the public unless the person to whom the design has been disclosed is under an obligation to maintain confidentiality": see ALRC 74 at [5.34]. In relation to the corresponding pre-2001 English legislation, prior use was treated as a form of publication, and is described in Russell-Clarke & Howe on Industrial Designs (9th edition, Sweet and Maxwell) at [3-100]-[3-101] as follows -
Prior publication of a design by prior use can be said to take place when the design has been applied to articles, and those articles have been used in such a way that the design becomes disclosed to the public before the date of application for registration of the design in suit.
In general there will be publication if articles to which the design is applied are manufactured, displayed or used in such a way that members of the public will or might see them. It is not necessary that the articles should have been sold. Prior use thus does not mean use by the public, but use in public as opposed to use in private.
(Footnotes omitted.)
9 There is a body of authority concerning the principles relating to establishing a "prior art base" under the Patents Act 1990 (Cth), which is defined in the Dictionary to that Act to include "information made publicly available through doing an act". In patent cases, proof of a prior art base may be relevant for the purposes of determining whether an invention involves an inventive or innovative step. The body of authority includes the cases referred to by Besanko J in Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52 at [200]-[208]. At least one general element of those principles, namely the need for a cautious approach to the evaluation of uncorroborated evidence, and the evidence of witnesses' recollections, has been applied to the proof of the prior use of a design: Multisteps Pty Ltd v Source and Sell Pty Ltd [2013] FCA 743; 214 FCR 323 at [103]-[104] (Yates J), citing J Rapee & Co Pty Ltd v KAS Cushions Pty Ltd at 299 (Gummow J). Courts have given similar guidance to the evaluation of uncorroborated oral testimony of recollection in other contexts where the acceptance of such evidence might lead to valuable interests in property being defeated: see, Birmingham v Renfrew (1937) 57 CLR 666 at 674 (Latham CJ) and 681-682 (Dixon J). Any such guidance is consistent with the position that what is ultimately required is proof on the balance of probabilities, taking account of the nature of the cause of action, the subject-matter of the proceeding, and the gravity of the matters alleged: Evidence Act 1995 (Cth), s 140.
10 In relation to the Designs Act, it is unnecessary on this interlocutory application to state any conclusions as to the metes and bounds of what might qualify as "designs publicly used in Australia" for the purposes of s 15(2)(a) of the Designs Act, save to observe that the public display or the sale to the public of a manufactured or hand made product may constitute a public disclosure and therefore a public use of the design of the product, being the overall appearance of the product resulting from one or more of its visual features. Whether public use in this way is established would depend upon the circumstances, and the quality of the evidence.
11 In relation to each of the four registered designs, the respondent seeks to allege both prior public use in Australia, and prior publication in Australia and elsewhere. The prior publications that are alleged include instances of US and Canadian design patent registrations, an online tool review website, and the publication of print and online catalogues by distributors and retailers of shovels. Specifically, the respondent seeks to rely upon publications on the websites maintained by Cyclone Industries Pty Ltd and Spear & Jackson, and upon publications in catalogues of hardware chains in Australia, namely Blackwood & Son Pty Ltd, Bunnings, and Mitre 10. In addition, in relation to the publications by Cyclone Industries, Spear & Jackson, and the hardware chains, the respondent seeks to allege that the identified shovels were advertised for sale in Australia before the priority date, and that it is therefore to be inferred that the relevant shovel was publicly used in Australia before the relevant priority date.
12 Before identifying the areas of dispute, I will identify what was not in dispute. The applicant did not oppose the application to amend the cross claim to the extent that the respondent sought to remove a number of claims, including a claim that the registration of the applicant's designs was, "obtained by fraud, false suggestion or misrepresentation": see s 93(3)(d) of the Designs Act. The respondent did not provide any particulars of this allegation. Further, the applicant did not oppose the amendments to the extent that the prior art base on which the respondent relied consisted of the publication of a design in a document. The applicant submitted that although reliance on the publications in respect of some of the shovels appeared to be ambitious, the applicant did not oppose their inclusion. I took this to be an acceptance that whether the four registered designs were identical to, or substantially similar in overall impression to a design relied on as forming part of the prior art base, was a triable issue.
13 There were two aspects of the respondent's proposed amendments to its cross claim that were in dispute. First, the applicant opposed giving the respondent leave to allege prior public use. Second, the applicant objected to the respondent's removal of product codes in relation to prior designs of shovels on which the respondent relied. The second aspect of the dispute appeared to fall away, as confirmed by a joint note from counsel furnished at my request following the hearing.
14 In relation to prior public use, counsel for the applicant submitted that there was no proper basis for the allegations. This submission had three elements. First, it was submitted that the pleading of publications advertising shovels for sale within Australia was insufficient. This was because, so it was argued, that some of the pleaded publications were "hearsay third party publications available on the internet", such as the online digital publishing platform, "Issuu". It was submitted that, at most, this showed that the product was advertised for sale in a publication, and did not establish, and one could not readily infer, that "someone bought the particular shovel and used it publicly in the colloquial sense". It was submitted that a publication is "insufficient to identify the particular use or act demanded by the legislation".
15 Second, it was submitted that the authorities support a requirement that there be strict proof of prior public use, and that in consequence, and by way of analogy with patent cases, particulars of the type required by r 34.46(1)(b) of the Federal Court Rules 2010 should be provided, as the requirements of that rule provided a useful guide.
16 Third, it was submitted that the reliance upon the advertisements for sale of the Cyclone products amounted to "fishing". This submission was made in the context that it was common ground that the applicant had purchased the Cyclone business in 2014. On that basis, the respondent submitted that it can be reasonably assumed that the applicant will have, amongst its business records, documents evidencing the sale or use of many of the shovels the subject of the respondent's allegations of prior use. In response, counsel for the applicant submitted that it was likely to have only very limited historical records relating to the Cyclone business. It was further submitted, at least by inference, that the respondent did not have a proper basis to allege prior use in relation to the Cyclone products, and it was also submitted expressly that the respondent should not be permitted to use discovery as a fishing expedition.
17 I do not accept the submissions that were advanced on behalf of the applicant. The rules of pleading are calculated to avoid trial by ambush, and to promote the precise identification of the issues that are before the court: see, Dare v Pulham (1982) 148 CLR 658 at 664 (Murphy, Wilson, Brennan, Deane and Dawson JJ). Therefore, in any proceeding the purpose of pleadings is to enable the opposing party to have fair notice of the case that must be met at trial, and to enable the court to know what issues are to be determined. Pleadings ordinarily allege material facts, and not the evidence by which material facts are to be proven. Generally speaking, it is not the court's function in evaluating the adequacy of a pleading to anticipate the evidence that might be called, and to form peremptory views about admissibility. A pleading which has a sufficient underlying factual basis may be augmented after invoking processes of discovery and production of documents by subpoena. And to have a proper basis to allege a claim does not involve having knowledge of all the evidentiary elements in support of the claim.
18 I do not accept the applicant's submission that the respondent's allegations of prior public use lack a proper basis. At this point, the respondent's case relies upon inference, rather than direct evidence. Plainly, whether the inferences of prior public use which the respondent alleges arise from the fact of advertisements of shovels for distribution and retail sale in Australia are triable issues. The allegations of prior use raised by the respondent will turn upon the court's evaluation of the totality of the circumstantial evidence, and any direct evidence that may be adduced.
19 The applicant's objection that some of the pleaded publications are "hearsay third party publications available on the internet" was undeveloped, and was misplaced. The court is not called upon to determine the admissibility of evidence at this point. The court is only concerned with whether the pleadings give the applicant fair notice of a tenable case that is to be met. Moreover, it is not self-evident that the publications to which the applicant refers would be inadmissible. At trial, questions of admissibility would first depend upon the purpose for which the evidence is adduced, and then upon what other evidence is to be adduced, including evidence supporting inferences about the authenticity of documents (if that is a matter in dispute).
20 The applicant's reliance upon authorities relating to the cogency of evidence and the "strict proof" required to establish prior use is also misplaced. Generally, and as I have indicated at [9] above, the guidance that has been given in the authorities relates to the assessment of oral testimony of witnesses involving unaided recollection, and their assessments on issues involving questions of fact and degree such as similarity, the acceptance of which might defeat a patent, or a registered design. For example, in Re Wingate's Registered Design No 768,611 (1934) 52 RPC 126, evidence was given at trial by a witness who manufactured and supplied spectacles that were said to be identical with the plaintiff's registered design. The spectacles themselves were not produced. It was in that context that Farwell J stated at 134 -
… Without throwing any sort of doubt on the veracity of the witness who spoke to this matter, I think it would be most unsafe for the Court to hold that the prior user was proved where the design which is said to constitute the prior user is not produced and cannot be produced in Court for inspection. In a case of this kind where the appeal has to be to the eye and to nothing else, although an instructed eye, it is essential to my mind that that which is relied upon as a prior user should be available for the Court to see in order that it may judge for itself whether the two things are the same. A witness who in the witness box says that from recollection the two things looked the same may be a perfectly truthful witness, and I am not suggesting that any of the witnesses were saying what they believed to be untrue, nevertheless it would be very unsatisfactory sort of evidence upon which the Court could proceed, and accordingly I hold that the prior user has not been proved and is not therefore a ground upon which I can hold the registered Design to be invalid.
21 The statements of principle and guidance in more recent cases have similar features: Commonwealth Industrial Gases Ltd v NWA Holdings Pty Ltd (1970) 180 CLR 160 at 165-166 (Menzies J); Windsurfing International Inc v Petit [1984] 2 NSWLR 196 at 231C (Waddell J); J Rapee & Co Pty Ltd v KAS Cushions Pty Ltd at 299 (Gummow J); Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 524-525 (Gummow J); Richsell Pty Ltd v Khoury (1994) 30 IPR 129 at 134 (Keifel J); Aspirating IP Ltd v Vision Systems Ltd at [199]- [203] (Besanko J); and Multisteps Pty Ltd v Source and Sell Pty Ltd at [104] (Yates J).
22 No occasion arises on this application, which is concerned with the sufficiency of the respondent's proposed pleadings, and which rely upon documents and inference, to engage with the guidance given in the authorities as to the evaluation of oral evidence at trial for the purpose of making findings of fact. Furthermore, in all of this there is a danger that observations made by one judge in the course of evaluating evidence at trial, and making findings of fact, are misinterpreted as laying down rules of law. Law reports should not be ransacked and sentences apt to the facts of one case extracted from their context and treated as propositions of universal application: Teubner v Humble (1963) 108 CLR 491 at 503 (Windeyer J).
23 Finally, I reject the applicant's submission that the respondent should be required to give particulars that correspond to those that are required under r 34.46 of the Federal Court Rules, which apply when a party disputes the validity of a patent. The applicant submitted that in relation to prior public use of a design the respondent should give particulars of: (a) the relevant act; (b) the name of the person alleged to have done the act; (c) the period within which, and the place where, the act is alleged to have been done publicly; (d) a description that is sufficient to identify the act; and (e) if the act relates to a product, whether the product exists and, if so, where it can be inspected. The submission that such particulars should be given reflect the requirements of r 34.46(2)(b), which is premised on there being an allegation that an "invention is not a patentable invention because of information about the invention in a document or through the doing of an act or thing". That language in turn reflects the definition of "prior art base" in the Dictionary to the Patents Act, which refers to "information made publicly available through doing an act, whether in or out of the patent area" (emphasis added). The applicant's submissions had as their premise that the respondent had to establish the doing of an act, when that is the language of the Patents Act. Long ago, the question whether principles derived from the law of patents should be applied to designs was identified: Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725 at 729 (Dixon J), citing Gramophone Co Ltd v Magazine Holder Co (1911) 28 RPC 221 at 226 (Lord Halsbury). Patent laws protect different interests, including methods and processes, which may require a higher level of scrutiny and particularity, which explains the requirements of r 34.46. The reason that there is no rule in relation to designs that has the prescriptive requirements of r 34.46(2)(b) is therefore reasonably apparent.
24 The corresponding rule in relation to revocation of the registration of a design is r 34.38, which provides -
34.38 Revocation of registration or rectification of Register - Designs Act
(1) A person who wants an order under:
(a) section 93 of the Designs Act, to revoke the registration of a design; or
(b) section 120 of the Designs Act, for the rectification of the Register;
must file an originating application that includes particulars of the grounds for revocation or rectification on which the party making the application relies.
(2) A party is not entitled to tender any evidence, or make any submissions in support, of a ground for revocation or rectification not stated in the application.
25 The sufficiency of particulars that are required under r 34.38 will be governed by general principles relating to practice and procedure and case management, to some of which I referred at [17] above. For present purposes, the respondent's particulars of prior use in the proposed further amended cross claim are adequate. Depending upon how the respondent proposes to put its case at trial, the particulars may have to be augmented in due course: see, Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd [1996] FCA 115; 66 FCR 41 at 56 (Ryan J); Pahuja v TCN Channel Nine Pty Ltd (No 2) [2016] NSWSC 1074 at [20] (McCallum J). The material facts alleged by the respondent are capable of giving sufficient support to prior use of the designs embodied in the shovels that have been identified. Whether that is the case, and whether there is identity in design or substantial similarity in overall appearance, are for trial.
26 For completeness, I reject the applicant's arguments that in relation to the Cyclone branded products the respondent is embarking on a "fishing expedition" to buttress its claims. It is, as I have mentioned, legitimate for a party to augment its case by processes of discovery and the production of documents by subpoena if there is a proper basis to make the claim in the first place. In my view, the reliance upon advertisements for the sale of the Cyclone products affords a proper basis for the claims that had been a prior public use of the designs embodied in those products. Whether, and to what extent, the applicant should make discovery of any documents that are, or have been, in its possession, custody or power are not issues that are currently before me. The scope of discovery that the respondent might seek from the applicant may depend upon whether, and if so to what extent, the applicant puts prior use of the designs of the cyclone shovels in issue in its defence to the further amended statement of cross claim.