D07.3 Published in a document within or outside Australia

Date Published

D07.3.1 Document

Document is defined by section 25 of the Acts Interpretation Act 1901 as including:

document includes:

a. any paper or other material on which there is writing;

b. any paper or other material on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; and

c. any article or material from which sounds, images or writings are capable of being reproduced with or without the aid of any other article or device.

‘Writing’ which is used in this definition is defined as:

writing includes any mode of representing or reproducing words, figures, drawings or symbols in a visible form.

Thus besides the traditional concept of documents being on paper, documents also include things like tape recordings, CD's, DVD’s, floppy disks, computer data-banks, and photographs.

It is therefore clear that the prior art base includes information relating to designs which has been published in any of:

  • in printed publications including magazines, newspapers, trade journals, catalogues;
  • on the internet including on manufacturing websites, in advertisements, in articles;
  • on the Designs or Design Patent Databases of overseas IP Offices; and
  • electronically such as emailed newsletters.

D07.3.1.1  Trade marks and patents as citations

A trade mark may form the basis of a citation in two ways:

  1. a trade mark that is characterised by the visual features of pattern or ornamentation (such as a label, flag, napkin) might provide anticipation of a particular product bearing visual features the same as, or similar to, the trade mark. At issue will be the extent to which features indicated in the trade mark are part of the design, and the extent to which the product is disclosed (explicitly or inherently) with the trade mark.

A design may include visual features of pattern or ornamentation in a prominent and meaningful way, which is the same as, or substantially similar to, wording and / or imagery seen as part of a trade mark. For example:

Design for a label​​​​​​​

Entry on trade mark register published prior to the priority date of the above design

The trade mark extract would be considered citable prior art as it consists of identical visual features that appear as part of the design for a label, including a similar overall shape.

This same trade mark extract would not be considered substantially similar in overall impression to a product which whilst including a representation of the trade mark, is sufficiently different in overall shape. For example, a design for a wine glass that includes a printed company logo. Even where a trade mark extract may include information suggesting that it will be applied to the product the subject of the design (for example glassware), the trade mark extract does not show this product and therefore is not considered citable prior art.

2. A shape trade mark which inherently discloses a product of some type having 3-dimensional features of shape and/or configuration, and possibly pattern and/or ornamentation. See below trade mark extract:

Citable trade mark extracts may also include those that whilst not seeking protection for the shape of the product, include the image of the shape (displaying shape and configuration) as part of the trade mark material.

A patent specification, to the extent that it discloses a design, can also be citable prior art by reason of s.15(2)(b). The specification may include patent drawings, illustrating the claimed invention, applicable to a product the subject of a design application.

Regardless of whether the product bearing a trade mark, or the subject of a patent is relevant to s.15(2)(a) or s.15(2)(b), in all instances, the question to be asked is – what is the design (if any) that is disclosed in the citation.

D07.3.2  Published

The criterion of ‘published’ relates to public availability. It is not limited to the process of producing multiple or a requisite amount of copies (such as the printing of a magazine).

A design is published in a document if:

  • the document is one that a member of the public can inspect "as of right"; or
  • a person not bound by express or implied confidentiality has knowledge of the content of the document.

For the first of these, it is not necessary to establish that any person has actually inspected the document before the priority date. It is sufficient to show that they could have inspected it. Similarly it is not necessary to show that the document could have been easily retrieved – such as by being correctly indexed in a library catalogue. It is sufficient to show that a person could have inspected the document – even if only by browsing.

A document is publicly available so long as it is publicly available somewhere in the world before the priority date. In particular, this means that examiners can take the publication date of a design or design patent in the database of another IP office as the date of it being published for the purpose of s.15 of the Act.

Note:  For designs published by a foreign office, the dates of publication by that office are given under INID codes 43 to 46. It can be assumed that the design was publicly available on the earliest of those dates.

For a design to have been considered ‘published’, it should have been made available to the public without obligations of secrecy or confidentiality. In considering the circumstances which would impart an equitable obligation of confidence, the principal authority is the decision of Coco v AN Clark (Engineers) Ltd (1968) 1A IPR 586, which sets out two requirements to be satisfied for an equitable obligation of confidence to arise. First, the information must have the necessary quality of confidence, and secondly, it must have been imparted in circumstances importing an obligation of confidence.

It was found in Key Logic Pty Ltd (2017) ADO 8 that email correspondence containing representations of the subject design were not confidential despite the inclusion of a generic confidentiality footer below the signature block. When applying the test in the Coco decision, it was found that second limb of the test was not satisfied, namely the circumstances did not import an obligation of confidence and consequently the emailed images resulted in pre-publication.

D07.3.3  Within or Outside Australia

The Designs Act expressly includes publications anywhere in the world as part of the prior art base. The date of publication is the date of public availability – and for this purpose the public is anyone anywhere in the world. There is no requirement that the document be published in Australia before the priority date, nor that it be published to an Australian citizen before the priority date.

D07.3.4  Establishing publication date

For a document to be part of the prior art base, it is necessary to establish the date of publication preceded the priority date. The following principles apply:

  • The key issue is to establish that publication occurred before the priority date. Documents published many years before the priority date may require little evidence of their actual date of publication, since the mere fact of their existence and their self-evident age may be sufficient in themselves. On the other hand, a publication occurring a few months before the priority date may require clear evidence of the actual date of publication to establish that it was in fact published before the priority date.
  • For a publication by a Designs Office, the date of publication given by that Office on the publication [usually associated with one or more of INID codes 43 to 46] is prima facie evidence of the date of publication. That date might be controverted by the owner, but the owner would have the burden of showing that date was incorrect;

Note: It has been known for intellectual property offices to publish documents on a date different to that indicated on the publication. However this is an extremely rare occurrence, and would require evidence to establish that fact with regard to any particular document.

  • Publications by reputable organisations may have a similar implied confidence in the accuracy of the date of publication on the document. That date might be controverted by the owner, but the owner would have the burden of showing that date was incorrect;
  • Where a document gives a date of publication as a month, or a year, the date of publication is taken to be the last day of the month or year – unless there is contrary evidence of the actual date of publication.
  • Where a document is located on the Internet, the usual rules of publication date apply. However there are significant evidentiary issues that arise from the nature of the internet. In particular, what is the basis for asserting that a page as viewed today is the same as before the priority date? There are many web sites where the nature of the publication is such that there is a very high presumption that the relevant page is unchanged. There are many more sites where no assumptions can be made. Note in particular there is absolutely no reason to assume that statements such as ‘page last updated on xxxx’ have any reliability whatsoever.

There are a number of public web sites where people can upload images. On such sites, a distinction must be made between the purported dates of the images, and the upload date. The purported date of the image depends on the date arbitrarily set in the camera by the user; additionally it can be easily edited with appropriate software. Examiners should treat such dates as having no presumption of validity. However the date the image was uploaded to the site has a reasonable presumption of validity – assuming the site is independent, and has no commercial interest in the relevant products.

In many instances, it may be possible to establish the state of the page at a historical date using sites such as the ‘wayback machine’ at www.archive.org  that archive sites on a semi regular basis. However examiners need to be aware that while this facility will usually give a valid date, the level of certainty about any particular date is well less than 100%. This can be compounded if the WayBack machine displays the current web site as a result of the user’s computer not being properly configured with respect to Javascript. These uncertainties in the WayBack machine require some caution. The WayBack machine has a sufficient presumption of validity to assert a publication date in the first instance. However the presumption of validity is not so great as to negate a plausible assertion that the date indicated is in error. Accordingly, where an owner responds with a credible reasoned explanation of their belief that the date was in error (for example, based on the owner’s general knowledge of the industry), the examiner will proceed on the basis that the date from the WayBack machine is not reliable. In contrast, where the owner responds along the line of ‘the date is unreliable because it is from the WayBack Machine. Prove the date’, the owner will not have displaced the presumption of validity that does exist in the WayBack machine information. Consequently the examiner will not have any basis to disregard the date provided by the WayBack machine – and will proceed on the basis that the date from the WayBack machine is correct.

Proceedings before the Registrar are not bound by the Rules of Evidence. The Registrar is entitled to have regard to any matter that is logically probative [See, for example, the judgement of Deane J. in Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666]. But should the matter be appealed, those proceedings will be governed by the Rules of Evidence. See E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 at para 125 et seq, for one example of how the Federal Court has treated the WayBack machine in the context of the Rules of Evidence.

Where an examiner is desirous of establishing the date of publication of a web page, they must not contact the owner of the site. Any response by the site owner would be at best of an evidentiary nature, and non-definitive absent allowing the design owner the opportunity to cross-examine the site owner. Further, if the site owner is a commercial competitor (which may be likely if it contains anticipatory material), there are serious questions about the reliability of any dates provided – especially if there is a commercial advantage in giving an early date.

Where a relevant document is found that was plausibly published before the priority date, but there is some doubt about that fact, the examiner will raise the relevant ground of revocation in the first instance. If the owner challenges the fact of publication before the priority date, several scenarios might apply:

  • If the web site was owned by the design owner (or an affiliated company), the owner inherently possesses the relevant knowledge about when information was placed on their web site. Accordingly it is appropriate for the owner to provide a declaration setting out relevant facts, thereby providing a sound evidentiary basis to disregard the relevant document. Assertions that the Registrar should drop the objection merely because the Registrar cannot establish the relevant dates are of no weight in these circumstances – because the owner has the relevant knowledge.

It should be noted that the Registrar will not invoke regulation 11.28(a) to require the owner to provide the relevant evidence. Rather the relevant objection will be maintained until such time as the owner provides the necessary evidence.

It should additionally be noted that (in the absence of explanation) refusal to provide the relevant evidence may lead to the inference that the owner has no real basis to challenge the alleged publication date.

  • If the web site was owned by a third party, but the date can be readily challenged because it shows images of products made by the owner that were only manufactured after a later date, the owner should provide a relevant declaration identifying the product and when it was first released – thereby providing a sound evidentiary basis to disregard the relevant document. [The presence of a declaration will also assist third parties subsequently assessing the validity of the Design.]
  • If the web site was owned by a third party, and the owner has no ready means of establishing the date is incorrect (but believes it was published after the relevant priority date) they may make relevant assertions about the lack of evidence of the publication date. In this scenario the objection will usually not be maintained.

Note: This issue is purely an evidentiary issue, with the onus falling on the Registrar [or on the person requesting examination, in the context of a hearing under s.67(3)]. It should be noted that the ground of revocation of s.93(3)(d) – obtaining registration by fraud, false suggestion or misrepresentation – is likely limited to actions of the owner prior to Registration, and not during examination. However, where an objection is overcome merely on the basis of assertion, it is appropriate for the examiner to record in the file the fact that examination was concluded expressly on the basis of the assertion or representation made by the owner or their attorney.