A recently published decision of the Australian Designs Office suggests that the automatically generated ‘Confidentiality Notice’ in the footer to your email may not always be effective.

In Sun-Wizard Holding Pty Ltd v Key Logic Pty Ltd [2017] ADO 8, Sun-Wizard made a third‑party request for examination of Key Logic’s registered and certified design for a “Solar bollard”. Following the submission of evidence by both parties, the matter was heard by a Delegate of the Registrar of Designs.

Sun-Wizard relied on two emails with attached images as invalidating prior publications of the design.

During the oral hearing Key Logic conceded that the images attached to the emails were of the design. Therefore, the decision turned on whether the emails were publications, that is, made available to member(s) of the public without any restriction as to secrecy or confidentiality.

Key Logic submitted that the contents of the emails and the attachments “were confidential and received in circumstances importing an equitable obligation of confidence”.

Each of the emails was sent to “All EXlites Associates”.

Exactly how many recipients this constituted was unclear, but it was apparent that most of the recipients were sellers of Key Logic’s products. Each of the emails included after the signature block, in a smaller font size, a confidentiality notice in the following terms:

Confidentiality: This E-Mail is from EXlites. The contents are confidential and are intended only for the named recipient. The recipient is hereby notified that any use, copying, disclosure or distribution of the information contained in the E-Mail is strictly prohibited. If you have received this E-Mail in error, please reply to us immediately at info@exlites.com.au. Please delete the document from your E-Mail system.

In relation to Key Logic’s attempt to rely on the confidentiality notice at the end of each email, the Delegate found as follows (at [46]):

I am not persuaded that the confidentiality notice at the bottom of the email has the effect submitted by the Owner. Case law on the effectiveness of such notices is scant to say the least. Nevertheless, it is apparent that notices of that type are added almost universally by businesses as a matter of course beneath the signature blocks of their emails regardless of the content of the email to which they are appended. It is unlikely that any recipient of an email in a business setting reads beyond the signature block every time they receive an email. It is far more likely that they never read beyond the signature block. While a recipient is likely aware that there is probably such a notice lurking there—should they happen to turn their mind to the question—the ubiquitous presence of such notices means that they are unlikely to have the effect asserted by the Owner, regardless of the nature of the material either in the email or attached to it. It seems to me that in cases where what is contained in emails is truly confidential, and a sender wishes to make that known, a confidentiality notice at the beginning of an email is far more likely to be effective in importing an obligation of confidence to the recipient.

It is possible that the confidentiality notice might have provided more assistance to Key Logic had the circumstances been different, for example, if the number of recipients of the email messages was more confined.

In any event, the presence of a confidentiality notice in its email footer does not appear to have caused Key Logic any detriment. Accordingly, there does not appear to be any need to delete the confidentiality notice from your email footer as a result of this decision, but be aware that the usefulness of such a notice might be limited.

Key Logic has lodged an appeal with the Federal Court of Australia. We will watch with interest and update you when a further decision is issued.

Gavin Adkins is a patent attorney whose practice now centres around IP litigation (patents, registered designs and trade marks) and commercial legal advice. tel://+61 3 9243 8300 Email: gavin.adkins@griffithhack.com