Is the Registered Design rendered neither new nor distinctive and thus not a registrable design when compared with the GENI design forming part of the prior art base?
43 The answer to that question falls to be determined by whether the design is "new" and "distinctive" when compared with, relevantly here, the design of the GENI solar bollard.
44 As to distinctiveness, the question is whether the Registered Design is substantially similar in overall impression to the design of the GENI solar bollard. In determining that question, the Court is required to give more weight to similarities between the GENI design and the Registered Design (s 19(1)); have regard to the state of development of the prior art base for the Registered Design (s 19(2)(a)); if only part of the Registered Design is substantially similar (in overall impression) to the GENI design, the Court must have regard to the amount, quality and importance of that part in the context of the design as a whole (s 19(2)(c)); have regard to the freedom of Mr Arieni (the creator) to innovate (s 19(2)(d)); have regard to the "appearance of the design as a whole" (since the statement of newness and distinctness does not identify any particular visual features (s 19(3)); and, finally, the Court must, in considering each of these factors, apply the standard of the informed user (s 19(4); see also [23] of these reasons).
45 The evidence in the proceeding on this topic of newness and distinctiveness of the Registered Design when compared with the GENI design is given by Mr Arieni, Mr Fry and Palfrey. The evidence needs to be put in context.
46 As to Mr Arieni's evidence, he is the managing director of Key Logic and KWPL. Key Logic was formerly the sole shareholder in Exlites and is now the sole shareholder in KWPL.
47 Mr Arieni says that he and three friends established Key Logic in 2003. They began working in the lighting and water sectors of industry supporting Australian companies to commercialise technology in each sector. Mr Arieni then began to focus upon developing light and luminaire designs for street, carpark, pathway and other overhead lighting applications and an "LED (solar bollard) for low level pathway and driveway lighting". In 2006, Mr Arieni created "Exlites" as a brand for solar lighting products and adopted that name as the new name for his company. Between 2003 and 2008, Mr Arieni would spend many months working in Taiwan designing solar lighting products and learning about new lighting technology.
48 By December 2005, Mr Arieni had finalised the design for the GENI solar bollard and was preparing to release that product to the market in Australia in January 2006. In 2008, he decided to start making products in Australia, with a view to starting to do so in 2009. In 2009, Mr Arieni began working with a Queensland based company "Sunshine Plastic" which later became "Yandina Plastics". Mr Arieni says that he worked with the designers to design "new product external housing" based on seeking to resolve faults in the GENI solar bollard. Mr Arieni says that the new product would ultimately become the design for the GENII solar bollard. Yandina Plastics was commissioned to design the tooling to manufacture the GENII solar bollard according to Mr Arieni's design, making adjustments where appropriate to better suit the moulding process for the production of the tooling.
49 Mr Fry also gives evidence of these matters, the role of Yandina Plastics, the role of other tool designers and his own role in these matters. Mr Fry's primary focus was upon the technical matters. I will return to Mr Fry's evidence later in these reasons.
50 Mr Arieni says that he met Mr Fry, who is a director of Sun-Wizard, in late 2008. At that time, Mr Fry was a reseller of products supplied by "Orca Solar Lighting" ("Orca"). Mr Arieni understood that Mr Fry operated an auto-electrical business that sold readymade solar lights and solar water pumps to local councils and others. Orca was a distributor of the Exlites 3500 lighting product. Mr Arieni says that in late 2008 Mr Fry visited Orca's premises which were located next to the Exlites office in Marcoola on the Queensland Sunshine Coast, and the staff of Orca introduced him to Mr Arieni. Mr Arieni says that he remained in touch with Mr Fry and in early 2009 Mr Fry told him about a solar lighting tower that he had been developing. As far as Mr Arieni was aware, Mr Fry did not have any experience with light fixture design and wanted to use the Exlites 3500 series of lighting products on his tower. Mr Arieni says that Exlites at that time was also developing its own lighting tower which Mr Arieni considered to be "far superior".
51 Mr Arieni says that he came to the "idea of recruiting [Mr] Fry to Exlites" to work on the Exlites solar lighting tower project. Mr Fry received a proposal from Mr Arieni in late 2009. Due diligence enquiries took place. Mr Arieni says that Mr Fry began "working with Exlites" in December 2009 and became a director of Exlites in January 2010 taking up the role of "Director and production manager mainly on the solar lighting towers", taking over the "role of production and logistics". By January 2010, Mr Arieni had already been working on the design of the GENII solar bollard.
52 Mr Arieni lodged the application for registration of the design now under challenge on 7 June 2010. Mr Fry says that he was not aware that the application had been lodged.
53 Mr Fry gave evidence that prior to January 2010 he had no role in Exlites and that prior to joining Exlites as a director he had conducted an auto-electrical business in the mining industry looking after solar pumping stations and some lighting for the cattle industry. Mr Fry gave evidence that at Exlites he was responsible for the "technical side of stuff as far as electrical design and electrical circuits, manufacture of those particular circuits … and assembly of that sort of stuff". Mr Fry says that he had some dealings with resellers of Exlites products (such as communicating with them about training and how the products worked); no dealings with wholesalers; and dealings with "members of the 'C I Network'" on technical aspects concerning "the operation of the lights … how they worked, and installation". Mr Fry says that he was "mostly" focused on the "technical aspects". He says that in dealing with members of the "C I Network" he dealt with them as he dealt with any other person with whom he engaged for Exlites whether members of that network or distributors of the Exlites products.
54 Mr Fry accepted in cross-examination that when he joined Exlites in January 2010, Exlites was already selling the GENI product; that he, by his business called "Auto Sun and Air" had installed the GENI solar bollard at Brampton Island in 2008; and that by January 2010, Mr Arieni had already commenced the process of developing the design for the GENII solar bollard.
55 Mr Fry accepted in cross-examination that "very shortly after" joining Exlites, he was taken to Yandina Plastics where for the first time he was shown the "drawings of the light" concerning what was "being asked [to be] developed" and an image of the GENII solar bollard that was being developed by Mr Arieni. Mr Fry says that the tooling for the GENII design was trialled at Yandina Plastics, then sent to Tool Tech for modifications and then sent to Plasmasters for further trials and modifications. Mr Fry accepted that until that point (the transfer to Plasmasters) he had not been involved in the design of Exlites' solar bollards. Mr Fry accepted in cross-examination that the "development of the design" of the GENII bollard up to that time was "basically Mike's idea". Mr Fry accepted that the design of the GENII solar bollard incorporates, inside the covering or surround, a "conically shaped feature" sometimes described as a "conically shaped diffuser" or as Mr Fry prefers a "conically shaped reflector" as "it" (that feature) "was always called a reflector".
56 Mr Fry accepted that Mr Arieni designed that feature present in the GENII model. Mr Fry also accepted that Mr Arieni designed the "shape of the outer casing" of the GENII model. Mr Fry gave evidence that his contribution to the development of the product was concerned with a problem with the radius of some of the corners in the tooling. The problem was that the radius was too tight and too constricted creating flow problems with the polycarbonate during moulding which was giving rise to weld lines or marks and lines which were not commercially acceptable. That problem caused the tooling to be sent to Plasmasters.
57 Mr Fry accepted that the process of developing the tooling to the point where a suitable product could be produced involved making "several changes … to the product over about 18 months, to the tooling to get it to a stage where it was almost acceptable apart from the fact of the weld lines" and that the process of designing and developing the GENII solar bollard was "a very expensive process" including applying the majority of the $125,000 lent by Mr Fry to Exlites, to the purchase of the tooling. Mr Fry accepted that Exlites invested significant amounts of money in the development of the GENII solar bollard.
58 Mr Fry also accepted that the modifications he made to the tooling (the radius correction work) did not affect the shape of the internal diffuser (reflector) because that work "wasn't to do with the reflector inside the light". Mr Fry also accepted that the modifications to the tooling did not change the shape of the outer casing although it changed the "internal shape of the casing" because the "radius of the corners" of the tooling had been modified. Mr Fry also accepted that prior to joining Exlites as a director he had never designed a solar powered luminaire.
59 Mr Fry also accepted that the GENII solar bollard (illustrated in a photograph in the document at p 355 of the Court Book to which Mr Fry was taken) has the "conical or funnel-shaped diffuser" or reflector which is absent from the GENI model; that the whole body of the light is different in size; that the conical shape of the reflector in the GENII product provides an important technical benefit compared to the GENI model because of the presence of the "conical reflector shape"; and that the conical shape of the reflector also assists in providing an even light pattern.
60 Although Mr Fry accepts in his oral evidence the matters I have described as accepted matters, one point of distinction contended for by Mr Fry is that looking at the Seven Large Representations the subject of the Registered Design, rather than images of the GENII product as manufactured, does not reveal, in the representations, the presence of the conical shaped reflector (diffuser) as one of the features of shape, configuration or ornamentation of the product, that is, one of the visual features of the design as registered.
61 This is said to be so particularly in relation to representation number 7.
62 Representation number 3 (a drawing) plainly shows a partial three-dimensional cross-section of what appears to Mr Fry to be a GENII light. Mr Fry accepted that the GENII light (as shown, for example, at Court Book p 355) incorporates the visual feature of the conical shaped reflector and so it seems to follow that since the lower section of a conical shaped reflector appears, plainly enough, to the eye, in representation number 3, such a feature is present in the design the subject of the registration, although not fully apparent in representation number 3.
63 Representation number 4 (also a drawing) is said by Mr Fry to be an exploded view of representation number 2 (also a drawing). Drawing number 4 shows what is said to be the "central cone". Mr Fry's comments concerning drawing number 2 suggest that the shape of the "light head" is different to a GENII light and different to the light head in drawing number 7. There seems to be no point of distinction raised by Mr Fry in relation to drawing number 2 (of which drawing number 4 is an exploded view) that there is no conical shaped reflector.
64 As to representation number 7 (a photograph), Mr Fry says that the photograph shows how a completed solar light ready to be inserted into (or on) a post looks subject to battery connections being attached. Mr Fry also says that it is usually possible to see some of the internal components of the light head in a photograph of such a product but, for some reason, the internal components are obscured in the representation which, for Mr Fry, "makes it difficult to tell whether the light head is a GENI or a GENII". Mr Fry also says that the battery used (in the photograph) is the battery that was to be used in the later GENI and early GENII lights and so, for Mr Fry, the depiction of the battery is not determinative.
65 Mr Fry says that based on his "detailed knowledge of the Exlites lights", he believes that the photograph is "most likely a GENII light", as the characteristic flattened portion or balcony that appears on the lower portion of the dome is typical of GENII lights and the base and mounting screw hole are similar to the GENII light.
66 Mr Fry says, however, that the photograph is "not clear, in particular as concerns the internal features that I would usually use to tell the GENI and GENII light heads apart".
67 Apart from the particular issue Mr Fry raises about the clarity of the photograph at representation number 7, Mr Fry accepts that he usually uses the internal features of the GENI and GENII lights to tell them apart. The dominant internal feature of the GENII light, in that regard, is the conical shaped reflector. However, Mr Fry says that in the case of the photograph, the conical shaped reflector is "not clear".
68 Apart from these matters, Mr Fry says that the GENI and GENII Exlites solar bollards are the same in the following ways.
69 First, they were both marketed and sold under the same range of "post shapes and sizes" with variations in millimetres.
70 Second, the "method of attachment" of the "light head" to the post was similar, that is, "by screws" through holes drilled into the post with the screws passing into sockets in the light fitting.
71 Third, the option of "dress rings" was the same for GENI and GENII. A dress ring was inserted between the top of the post and the lighting head to protect the top of the pole and stop water leaking into the area where the battery was located. Mr Fry says that the addition of a dress ring did not cause "any relocation of the internal workings of the light and battery". The GENI product had the option of a dress ring whereas the GENII typically used a dress ring.
72 Fourth, both "light heads" fit into a "socket of [almost] the same diameter" (later in the oral evidence Mr Fry made reference to a "couple of millimetres" distinction).
73 Fifth, they both have a similar "fixing arrangement".
74 Sixth, they both have a battery "attached in a similar manner".
75 Seventh, they both have a LED assembly in a "similar position facing upwards".
76 Eighth, the "light heads" have a "very similar external shape/silhouette".
77 Ninth, they both have a "solar panel in the top".
78 Mr Arieni says that all of the representations shown in the Design Registration are representations of a design for the GENII solar bollard. He says that the representations numbered 1 to 4 and 6 are all computer-aided design drawings and representations 5 and 7 are representations of "actual early parts of the Generation 2 solar bollard". The references to numbered drawings and photographs (1 to 7) is a reference to the numbering adopted in Exhibit EAP-4 to the declaration of Mr Palfrey dated 17 June 2016. That numbering corresponds to the numbers attributed to the drawings at [4] of these reasons.
79 Mr Arieni also says that the representation number 7 "was one of the trial shots which were not able to be produced consistently by Yandina Plastics". Mr Arieni says that the properties of the file for the photograph indicate that it was created on 28 May 2010, not long before the filing of the application on 7 June 2010.
80 Mr Arieni expresses the opinion that the design of the GENI solar bollard is "very different" to the design of the GENII solar bollard and the "most striking difference" between the two is the size of the head and the internal reflector which is cone shaped, emphasising that "[t]here is no internal reflector in the generation 1 with simply an internal mould point being shown at the top of the post".
81 The Large Scale Representation (No. 7) as it appears in the Design Registration is Annexure A to these reasons.
82 In cross-examination, Mr Arieni was taken to the image at Court Book p 355 of the GENII solar bollard (which also shows an image of the GENI solar bollard) and Mr Arieni accepted, as put to him, that the conical reflector could be seen in the GENII image at p 355. It was then put to him that the conical reflector could not be seen in "design drawing 7 … sorry - which is more difficult to see in design drawing 7" [emphasis added]. Mr Arieni accepted that the conical reflector was "more difficult" to see "in regards to the quality of the representation of the image".
83 As to the representation at Annexure A (Large Scale Representation 7), Mr Arieni gave evidence that it is an image of the GENII and that although Mr Fry contended that the image was unclear, Mr Arieni regarded it as "actually very clear". It was put to Mr Arieni in cross-examination that in Figure 7 "the undersection of the head of the bollard … [is] quite unclear" in terms of "whether or not it discloses a conical reflector". Mr Arieni responded that the image at Figure 7 "actually does" disclose the conical reflector adding that "taking a photograph and duplicating a photograph depending on the quality of the pixels will actually distort the actual visual look of the - the actual image [but] [t]his is a photograph of a GEN2 on page 339 [of the Court Book which is the image at Annexure A]".
84 Mr Arieni gave evidence that he "totally" disagreed with Mr Fry's evidence as put to Mr Arieni in cross-examination that "you can't tell if it was a GEN1 or a GEN2 because it's too unclear".
85 As to Mr Fry's list of similarities described at [69] to [77] of these reasons, Mr Arieni gave the following evidence: images were published that gave "examples" of the "poles" to which either a GENI or a GENII light head could be attached although the poles were not offered for sale by Exlites (the point, at [69]); the method of attachment of the light head to the post was "by screws" as described, at [70]; a dress ring could be inserted as described, at [71]; both light heads fit into a socket although there is a two millimetre difference as described, at [72]; both have a similar fixing arrangement, at [73]; battery attachment is similar, at [74]; the LED assembly is in a "similar position, facing upwards", at [75]; and as to both having a "very similar external shape/silhouette, at [76], Mr Arieni disagreed contending that the design of the GENII is "actually larger, more sleek in design" and by "more sleek in design", he accepted that he meant "flatter domed". Mr Arieni accepted that each had a solar panel in the top of the light, at [77].
86 Mr Palfrey also gave evidence on this topic. The background and relevance of Mr Palfrey's role in the events in issue is discussed later in these reasons.
87 Mr Palfrey was provided with the seven representations which form the basis of the Registered Design and asked to look at each representation and express an opinion about "what each drawing is a drawing of; and what visual features each drawing shows; and how the drawings relate to each other". He was also asked: "Do the drawings marked #1 and #7, look the same to you? What are they of? What are the differences between them (if any)?"
88 As to drawing 7, Mr Palfrey said this:
This is not the GENII version it is original version of the Solar Head. The reason is the square battery was used in the original version and not the GENII. Also the actual shape of the head is smaller, GENII is more of a Dome. The diffuser used in the GENII is not depicted in the image, which makes me believe it is not the GENII.
89 Mr Palfrey also said this:
I believe Drawings 1 & 7 are the older version and Drawings 2, 3, 4, 5 & 6 are the GENII.
90 Mr Palfrey also said this:
… drawings 1 & 7 are of the old style bollard and not the GENII and are related. They both illustrate a square and bulkier battery than that used in the GENII version that ARS [Mr Palfrey's company] had purchased.
91 As mentioned earlier, Mr Fry had observed that the battery used in representation 7 is the battery that was to be used in the latter GENI and early GENII lights and so, for Mr Fry, the depiction of the battery was not determinative and, in addition, based on Mr Fry's detailed knowledge of the Exlites lights, he believed that the image is most likely a GENII light although, in his view, the drawing was not clear as to the internal features of the light which he would "usually use" to tell the GENI and GENII light heads apart.
92 The evidence of Mr Palfrey as described below is unsatisfactory in a number of respects.
93 Mr Palfrey gave evidence that he has worked in a variety of technical roles in the electrical industry for 30 years at a range of companies. His background and experience working with electricity companies made him very familiar with electricity infrastructure and the components and products used by electricity companies and other public infrastructure organisations. He founded All Round Supplies Pty Ltd ("ARS") in 2000 and at the date of his declaration on 17 June 2016 he remained the owner and managing director of ARS. He has subsequently sold his shares in the company although he has made further investments in the company and remains a director.
94 Mr Palfrey says that ARS is the leading distributor of electrical infrastructure products to utility contractors in Australia. He says that Exlites supplied a variety of solar lighting products to ARS over the years and from 2009 Mr Arieni sought to have ARS promote and sell a solar bollard that Exlites was developing. He says that during that time (which I assume means from 2009) Mr Arieni provided him with documentation concerning the Exlites solar bollard "to use to market the product". He then identifies three categories of material comprising a 2009 Exlites catalogue and the material already mentioned at 26 and (c) of these reasons. Mr Palfrey's declaration is very short and does not elaborate upon any of those matters.
95 In the course of cross-examination, Mr Palfrey gave the following evidence.
96 Mr Palfrey said that the initial meeting with Exlites was brought about by Mr David McCormack who was a representative of ARS in New South Wales. Mr Palfrey said that ARS was at that time developing a green energy division to be headed up by Mr Greg Mutton and the initial discussions were about street lighting not solar bollards. Mr Palfrey, Mr McCormack and Mr Arieni met in late 2009 or early 2010 to discuss the "Superlux series" of Exlites products and they were then introduced to the solar bollard as a new product which "definitely [came] later". It was "first alluded to" at the meeting.
97 Mr Palfrey accepted that the meeting occurred in December 2009.
98 Mr Palfrey was asked when ARS became a member of the "certified installer network" and he thought that it could have been later in 2010 in about June or July 2010 or possibly a little bit later.
99 Mr Palfrey then gave quite emphatic evidence about the time when ARS was supplied with the GENII solar bollard by Exlites. His evidence was that in June or July 2010 he was supplied with the later version of the solar bollard, that is the GENII version, and that he was "pretty sure the first lot we received had the diffuser in it, the diffuser unit [that is, the first lot of solar bollards]". He said that he believed that ARS started selling the GENII solar bollard in June or July 2010 as that was when ARS "received our first shipment". Mr Palfrey qualified this evidence by saying that he would need to look specifically at the invoices but that was his understanding.
100 The proposition was put to Mr Palfrey that the GENII solar bollard was not made available to the public until the middle of 2012 due to problems with the tooling. Mr Palfrey observed that he would have to go and look at the part number but in terms of what he remembered of the solar bollard, the diffuser unit, he thought, was in "the first lot we received".
101 Mr Palfrey observed that it was some time ago and it was difficult for him to exactly picture which units were supplied. Again, he observed that his recollection was that ARS sold the GENII solar bollard from the middle of 2010 although he "would have to go back to further records to find out exactly, back to past invoices, part numbers on invoices etc".
102 Mr Palfrey then accepted that he had no recollection, specifically, of what sort of bollard was being sold by ARS in 2010. Mr Palfrey assumed based on the email of 3 May 2010 mentioned at 26 of these reasons that ARS did not receive the product until June or July 2010. Mr Palfrey thought that must be so because the shipment in the middle of 2010 "had a diffuser, with the LEDs at the bottom of the - the bottom of the light" and "that was the model that we received".
103 Mr Palfrey accepted that he did not say anywhere in his declaration of 17 June 2016 that his company, ARS, sold the GENII bollards in 2010.
104 Moreover, Mr Palfrey accepted that a newsletter developed by ARS's "marketing person" dated April 2012 contained the observation under the heading "Green Energy Products", "new solar bollards arrive" and the newsletter contained the observation that: "After nearly two years development, the new ARS 2012 bollards are now starting to roll off the production line" and also contained these observations:
Moving the manufacturing from Asia to Australia was a monumental feat, which included overcoming issues with polycarbonate supply and battery supply, amongst other things.
It's a testament to the tenacity of the Exlites team that we now have an Australian-made product.
105 The newsletter also contains a discussion of some of the features of the new bollard design including its vandal resistant quality, and a range of "pole options". Mr Palfrey observed in response to the proposition that the newsletter was talking about the availability of the GENII solar bollard produced by Exlites, that although the newsletter did not specifically "say that", it was "hard for me to comment on that". Mr Palfrey accepted that ARS was telling its customers in 2012 that after nearly two years of development, the new Exlites bollard was now starting to roll off the production line.
106 After being pressed with that matter, Mr Palfrey again accepted that in his statutory declaration he did not say that ARS had sold GENII solar bollards in the middle of 2010 and observed that in his declaration he was talking about "pictures of bollards and that was all".
107 Mr Palfrey was taken to an email from Mr Arieni dated 12 June 2012 which observed that the GENII vandal resistant solar bollard was now available for the first production run. Mr Palfrey accepted that that observation was made in 2012, and was again taken to his evidence that ARS had sold the GENII solar bollard in the middle of 2010. Mr Palfrey observed that he had changed that position at the time of giving that earlier oral evidence to say that he did not know exactly what version it was and nor did he know if there was a version one or a version two of the GENII solar bollard. Having said that, Mr Palfrey then gave evidence that it was his "understanding" that the "first lot of solar bollards we received … is a GENII" and "that's what I believed that we then got in 2010".
108 Counsel for Key Logic put to Mr Palfrey that his evidence now seemed to be that ARS did receive the GENII solar bollard and sold it in 2010. Mr Palfrey again observed that for the purposes of his statutory declaration, he was asked to "pick between certain lights" and that was all.
109 Mr Palfrey was taken to his statutory declaration and invited to identify where he had suggested that ARS received a GENII solar bollard in 2010. Mr Palfrey accepted that the declaration did not assert that matter. Again, Mr Palfrey asserted that he believed that "at this particular time [June, July 2010], the one I received and the first lot we received would have been the new GENII model".
110 Again, Mr Palfrey accepted that he did not say in his declaration that he had "received any bollards". He said that he believed that ARS received a first lot of bollards in June 2010. Mr Palfrey gave evidence that the letter from Wynnes Patent and Trade Mark Attorneys was the basis for his declaration, suggesting inferentially that there was no need for him to mention supply by Exlites of the GENII in June 2010.
111 The evidence of Mr Palfrey on this topic is unsatisfactory.
112 Obviously enough, an assertion by Mr Palfrey that his company received the GENII solar bollard in June or July 2010 and particularly at any time prior to 7 June 2010 is a highly significant matter. So too is evidence that he recalls that the solar bollards delivered to ARS in either June or July contained the conical shaped diffuser.
113 Moreover, the evidence seems to be inconsistent with material issued by ARS itself.
114 It is surprising that Mr Palfrey had not undertaken steps to satisfy himself of the accuracy of these important facts before asserting them so emphatically, qualified only by the observation that this version of the facts was his "understanding" and that he would need to go back and check his records, invoices, part numbers and other documents. It is also unsatisfactory, on the one hand, that he would accept at one point that he has no real recollection of these things but yet, on the other hand, assert a recollection to the extent possible that his company did receive the GENII product on the footing that he could recall the conical shaped reflector or diffuser being present in the product.
115 The state of the evidence is such that it is perfectly clear that the GENII product containing the conical shaped reflector was not produced until much later and certainly not in 2010. I will return to the evidence in relation to that matter later in these reasons in addressing propositions put to Mr Arieni in cross-examination.
116 Mr Palfrey unfortunately gave the Court the impression that he had come along to give evidence about a fundamental matter going to important aspects of the chronology with a view to being an advocate for the invalidity of the Registered Design. This, of course, was not deliberate but merely a legacy of a fundamental lack of precision in his evidence and a significant failure to satisfy himself about important matters central to his evidence before giving the evidence.
117 The second area of difficulty is that Mr Palfrey was taken to a screen capture of a webpage for ARS described as "our online shopping portal" which made reference to the "Sun-Wizard solar bollard". Mr Palfrey was asked whether that was a solar bollard made by the respondent in the proceeding. Mr Palfrey answered in a particular way and was asked to answer the question put to him and say whether he accepted that ARS was now selling Sun-Wizard solar bollards. He answered that ARS was not selling them. He was asked when ARS ceased selling Sun-Wizard solar bollards and answered: "We don't promote them anymore. The last one we sold, two - again, I would be guessing, but it was a significant time ago … well I'd say more than 12 months ago … longer than 12 months". Mr Palfrey observed that he would have to check his records.
118 Counsel for Key Logic observed: "I want to understand when your company started selling the Sun-Wizard solar bollards and when it ceased selling the solar bollards". Mr Palfrey said: "I can't tell you the exact dates, I'm sorry. I can't recall". Mr Palfrey observed that the last Sun-Wizard solar bollard was sold by ARS more than 12 months ago and although Mr Palfrey was not being asked for an "exact date", he was not able to recall the period of time with any precision.
119 Mr Palfrey accepted that ARS "was promoting Sun-Wizard solar bollards" and he also accepted that in representations on the webpage for the Sun-Wizard solar bollard page, ARS was in fact illustrating the Exlites GENII bollard and thus ARS had been promoting the Sun-Wizard bollard using photographs of Exlites GENII solar bollard. Mr Palfrey accepted that an ARS marketing person had used the wrong photograph although that had not occurred deliberately. Mr Palfrey observed that ARS was not now promoting a Sun-Wizard solar bollard.
120 Counsel for Key Logic returned to this topic later in the cross-examination in this exchange at T, p 202, lns 30-43:
Counsel: Are you able to tell the court, at least approximately, when your company started selling the Sun-Wizard solar bollards?
Mr Palfrey: Geez. Again, I don't have an exact date. I would be able - if I had a chance to look at my records, I would be able to tell you, but I cannot recall the exact date, no.
Counsel: Right. You can't recall the year?
Mr Palfrey: I could only guess the number of years roughly. I would say somewhere - three years. Three/four years. I'm guessing, but I - again, it's a guess and I'm not - no, … sorry, I cannot answer that question.
Counsel: So this is when you started selling the Sun-Wizard - your company started selling the Sun-Wizard solar bollards?
Mr Palfrey: Correct.
Counsel: You think it might have been three or four years ago?
Mr Palfrey: I cannot confirm that exactly. That's my best educated guess at this stage without going back to my records.
121 On this topic, Mr Palfrey gave evidence that ARS had not entered into a formal commercial arrangement with Sun-Wizard, in particular, in relation to the solar bollard. As to any "informal commercial arrangement", Mr Palfrey gave evidence that ARS had purchased a product and sold a product prior to the date of his declaration on 17 June 2016 but could not confirm without checking the records of ARS when ARS purchased the first Sun-Wizard solar bollard.
122 It is now necessary to return to an aspect of Mr Fry's evidence.
123 In the course of cross-examination, Mr Fry was taken to a webpage under the heading:
124 Under that heading the following appears:
125 That webpage became Exhibit 23.
126 Mr Fry was asked whether the image depicted at [124] of these reasons is a photograph of the solar bollard Sun-Wizard is currently promoting and selling in the marketplace (as at the date of trial). Mr Fry said that it was not and when asked whether he thought it might be an Exlites solar bollard he said that he did not know and could not identify "whether it's either/or". Ultimately, Mr Fry thought that the image was "the first trial Sun-Wizard light, yes. Yes, it would be".
127 Mr Fry was asked when his company began selling the particular solar bollard identified in the above image, through Mr Palfrey's company. Mr Fry said that it was in 2015 when that particular light was sent to several companies and people for trial. Mr Fry accepted that in 2015 he supplied solar bollards to Mr Palfrey's company, ARS, as illustrated in the webpage at Exhibit 23. The solar bollards were supplied to ARS in 2015 by Mr Fry's company called Karmic Lighting. Mr Fry accepted that he is a director of that company and involved in the day-to-day running of that company. As to when Mr Fry first contacted ARS and supplied ARS with the particular bollard in Exhibit 23, Mr Fry said this (at T, Day 3, p 38, lns 4-10):
Exactly what time it was, I can't recall when I … first spoke or when we first conferred with … Mr Palfrey about the light. We talked to him about several different aspects of the light and marketing and he provided us with some marketing material that he was using that he has changed and what have you to suit our product, which was basically a cardboard box to transport the item with. And it was around the third month of 2015 that we sent some lights for him to trial.
128 Mr Fry gave evidence that he was not aware that Mr Palfrey would place those lights on the ARS website for sale to the public but if Mr Palfrey wanted to do so "that was his prerogative", or put another way in his answers: "That was at his [Mr Palfrey's] discretion. If he wanted to sell them he could. This wasn't … my call". Mr Palfrey accepted that the Sun-Wizard solar bollard the subject of these exchanges, that is, as depicted in Exhibit 23, was "a completed product that was suitable for being sold to the public if that's what All Round Supplies wanted and that "it wasn't just a trial product that wasn't suitable to be placed onto the marketplace".
129 Mr Fry was asked when he, through Karmic Lighting, first entered into a commercial relationship with Mr Palfrey's company, ARS. Mr Fry said that it would have been at "a similar time … Well, 2015". Mr Fry said that "there wasn't anything sold to anyone before the third month of 2015" and that Mr Fry had approached ARS rather than the reverse.
130 The evidence of Mr Fry is that by the third month of 2015, at the initiative of Mr Fry, a company controlled by Mr Fry had entered into a commercial relationship with Mr Palfrey's company to sell solar bollards which were sufficiently similar in shape to the GENII solar bollard that Mr Fry had difficulty in distinguishing between the two lights in the course of his evidence.
131 As to this aspect of the proceedings, I am not willing to accept Mr Palfrey's evidence that Exlites supplied a solar bollard to ARS at any time in June 2010 containing a conical shaped diffuser or reflector. Nor did it do so at any time in 2010. I do not accept Mr Palfrey's evidence about representation 7 in the Design Registration. I accept Mr Arieni's evidence that the Design Registration depicts features of shape, pattern or ornamentation described as a conical shaped reflector or conical shaped diffuser. Although Mr Fry gave evidence that, in his view, photograph 7 is "not clear, in particular as concerns the internal features that I would usually use to tell the GENI and GENII light heads apart", I accept that the visual feature is present in the design as registered. I do so on the footing of Mr Arieni's evidence.
132 Because the design contains a conical shaped reflector, and the shape of the dome is different to the GENI design, the Registered Design, as compared with the relevant part of the prior art, namely, the GENI design, is "new". It is not identical to the design of the GENI.
133 I am also satisfied having regard to the evidence of the similarities and the evidence of the feature described as the conical shaped diffuser or reflector that the design is distinctive when compared with the design for the GENI light which is the relevant art relied upon by Sun-Wizard within the prior art base, subject to what is said later concerning the matters at 26 of these reasons. I am satisfied that the Registered Design is not substantially similar in overall impression to the design for the GENI light and in reaching that decision I have given more weight to the similarities discussed in the evidence than the differences between the two designs. I am satisfied on the evidence that the presence of the conical shaped reflector is accepted by both Mr Arieni and Mr Fry as a significant visual feature, putting to one side the debate raised by Mr Fry about whether representation 7 clearly depicts the conical shaped reflector. That feature provides a very important functional aspect of the light especially in relation to diffusion but it also provides a very important visual feature of the design having regard to the overall design of the solar bollard and, in particular, of course, the light head.
134 As to the visual feature of the dome, Mr Arieni identifies the shape of the dome as an important visual feature of the overall design. Mr Fry in his evidence in relation to the seven images and in particular image 7, observes that based on his detailed knowledge of the Exlites lights, he believes that image 7 is "most likely a GENII light". Although Mr Fry says that the drawing is not clear as to the internal feature of the conical shaped reflector, he says that he is able to identify image 7 as a GENII light by reference to the characteristic flattened portion or balcony that appears on the lower portion of the dome which is typical of GENII lights. In other words, Mr Fry attaches some importance to the visual features of that aspect of the light.
135 I am also satisfied that the visual features of the dome contribute to the design as a whole. Having regard to these matters, I am not satisfied that the design is substantially similar in overall impression to the GENI design.
136 Thus, I am satisfied that Sun-Wizard has failed to demonstrate that the Registered Design is not a registerable design by reason of a comparison between the Registered Design and the GENI design forming part of the prior art base.
137 As to the matters at 26 of these reasons, those matters can be addressed briefly. I am not satisfied that any of the material described at 26 discloses the features of shape, pattern or ornamentation of a conical shaped reflector or diffuser as appears in the Registered Design of the GENII product. I am not satisfied that any of the material has the effect of rendering the visual features of the Registered Design neither new nor distinctive.
138 The next question is whether the disclosure of the design in the attachments to the emails described at 26 and (c) of these reasons occurred in circumstances where an obligation of confidence arose in the recipients to keep that disclosure confidential.