FCA 902
Designs – pleadings – whether must provide particulars of prior use similar to those required in patent proceedings
This decision concerned an application for leave to file and serve a further amended statement of cross-claim which alleged that the registered designs asserted by the applicant are invalid in light of a prior use.
Ames contended on this interlocutory application that AgBoss did not have a proper basis to assert the proposed prior use and needed to provide particulars of the prior use in the same way as required for a claim of anticipation of a patent claim by prior use.
Justice Wheelahan found that AgBoss should have leave to file its proposed amended pleading and that the rules as to particularising prior use for patent proceedings did not apply to proceedings for revocation of registered designs. His Honour observed that 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.
His Honour also observed that, to have a proper basis to allege a claim does not involve having knowledge of all the evidentiary elements in support of the claim. Accordingly, his Honour did not accept Ames’ submission that AgBoss’s allegations of prior public use lacked a proper basis just because those allegations relied on inference rather than direct evidence.