Ames Australasia Pty Ltd v AgBoss Australia Pty Ltd [2021] FCA 902

Ames Australasia Pty Ltd v AgBoss Australia Pty Ltd [2021] FCA 902

The respondent had a proper basis to plead prior public use because advertisements and publications concerning shovels distributed or offered for retail sale in Australia were capable of supporting triable inferences of prior public use. At the pleading stage, the Court was concerned with fair notice of a tenable case, not final admissibility or proof of evidence. Patent pleading particulars under r 34.46 were not required in a designs revocation claim, which is governed by r 34.38 and general pleading principles. The proposed particulars of prior use were adequate for present purposes, and reliance on Cyclone product advertisements was not an impermissible fishing expedition.

Jurisdiction
Australia
Judgment Date
04 August 2021
Procedural Posture
Intellectual Property Proceeding Alleging Infringement of Registered Designs With a Cross Claim Seeking Revocation of the Registered Designs / Interlocutory Application by the Respondent for Leave to File and Serve a Further Amended Statement of Cross Claim and an Amended Notice of Cross Claim
Outcome
Leave granted to the respondent to file a further amended cross claim and an amended notice of cross claim; costs to be addressed after submissions.
Legal Topics
['registered Designs' 'prior Art Base' 'prior Public Use' 'prior Publication' 'pleadings' 'particulars' 'leave to Amend' 'revocation of Registered Designs']
['intellectual Property' 'practice and Procedure'] ['registered Designs' 'prior Art Base' 'prior Public Use' 'prior Publication' 'pleadings' 'particulars' 'leave to Amend' 'revocation of Registered Designs']

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Procedural Posture

Intellectual Property Proceeding Alleging Infringement of Registered Designs With a Cross Claim Seeking Revocation of the Registered Designs / Interlocutory Application by the Respondent for Leave to File and Serve a Further Amended Statement of Cross Claim and an Amended Notice of Cross Claim

Legal Issues

  1. 1 ["Whether the respondent should be granted leave to amend its cross-claim to allege prior public use of the applicant's registered designs." 'Whether the respondent had a proper basis to plead prior public use based on advertisements and publications relating to shovels sold or distributed in Australia.' 'Whether particulars analogous to those required by r 34.46 of the Federal Court Rules 2010 for patent validity disputes were required in a designs revocation claim.' 'Whether reliance on advertisements for Cyclone products amounted to an impermissible fishing expedition.']

Ratio Decidendi

The respondent had a proper basis to plead prior public use because advertisements and publications concerning shovels distributed or offered for retail sale in Australia were capable of supporting triable inferences of prior public use. At the pleading stage, the Court was concerned with fair notice of a tenable case, not final admissibility or proof of evidence. Patent pleading particulars under r 34.46 were not required in a designs revocation claim, which is governed by r 34.38 and general pleading principles. The proposed particulars of prior use were adequate for present purposes, and reliance on Cyclone product advertisements was not an impermissible fishing expedition.

Court Disposition

Leave granted to the respondent to file a further amended cross claim and an amended notice of cross claim; costs to be addressed after submissions.

Orders

  • ['Counsel for the parties are to confer, and by 4.00 pm on 6 August 2021, the parties are to submit by email to the Chambers of the Honourable Justice Wheelahan a form of draft order to give effect to these reasons and a draft consent order in relation to the costs of this application and any costs thrown away, or,...