Implied confidence saves
distinctiveness of design
Inspire June 2021
In Justice Greenwood’s recent decision 1 in Key Logic v Sun Wizard,
we remarkably see the application of s 68(6) of the Designs Act (the Act)
for the first time, as well as a consideration of circumstances which gave
rise to an obligation of confidence through email communication.

As Sun-Wizard had requested
Australian Design Registration
examination and argued revocation,
AU332890 (the design) was filed on
His Honour explained that
24 September 2010 and certified on
Sun-Wizard bore the burden of
13 January 2012. The design relates
satisfying the Court that the design
to a bollard having a solar-powered
was not registrable. At paragraph
light source mounted on top. The
design was originally filed in the name [42], Justice Greenwood stated that
the owner of the design, Key Logic,
of Exlites Pty Ltd (Exlites) and was
transferred to Key Logic by assignment. bore the onus of demonstrating
the obligation of confidence arose
On 16 February 2015, Sun-Wizard
between the sender and the
filed a request for re-examination
recipients of the contentious emails.

of the design. Sun-Wizard
Regarding whether an obligation
contended that emails pre-dating
of confidence arose in respect of
24 September 2010 were sent by
the email correspondence between
employees of Exlites to a network
Exlites and the group of certified
of certified installers, and that these
installers receiving the emails, the
emails were a publication of the
Court’s analysis is of particular
design, thus rendering it not new
interest as an explicit confidentiality
or distinctive. Sun-Wizard further
agreement did not exist. The
argued that the registration was
emails did contain a pro-forma
not sufficiently distinctive
confidentiality footer. However,
in light of earlier superseded
Justice Greenwood considered this
models of the design. As a result
footer to be insufficient on its own
of re-examination based on the
to impart an obligation of confidence
new material provided by
Sun-Wizard, the design was revoked. on an intended recipient of an email.

Key Logic lodged an appeal to the
Federal Court under s 68(6) of the Act
against the decision of the delegate.

Reversing the decision to revoke
the design, the Court found it to be
new and distinctive, and that the
circumstances in which the emails
Maintaining appropriate
were sent gave rise to an obligation
confidentiality over new
of confidence on the recipients.

technology developments
At paragraphs [38] and [39]
can be crucial to
of the Court’s decision, Justice
maximising the value
Greenwood dealt with the
of intellectual property
question of onus.

Rather, Justice Greenwood found
it determinative that the emails
were sent to a closed and limited
group of certified installers who
were provided with benefits
and advantages through their
membership. Justice Greenwood
considered the information
contained in the emails to be
inherently confidential, as it
addressed features of the product
still under development and the
information was put to the cohort
in order to obtain their opinions.

Ultimately His Honour found that
the emails were provided to
recipients in their capacity as
members of a select private
network, solely for the purposes
of that network, and not for
public use, therefore giving rise
to an obligation of confidence.

Maintaining appropriate
confidentiality over new technology
developments can be crucial to
maximising the value of intellectual
property derived from them.

In circumstances where some
degree of disclosure to third
parties is necessary, confidentiality
can be protected through use of
confidentiality agreements, the
importance of which can be seen
in the above example. Had such
agreements been in place between
Exlites and its certified installer
network, the need to file an appeal
with the Federal Court of Australia
may have been avoided.

derived from them.

8 Peter Wassouf | Associate
B.Eng (Mech) (Hons), B.Bus JD MIPLaw
peter.wassouf@pof.com.au 1
Key Logic Pty Ltd v Sun-Wizard Holding
Pty Ltd [2021] FCA 208 (12 March 2021)