Acme Metal Goods Mfg Co Inc

[1982] ADO 2

In the Matter of the Designs Act 1906

‑ and ‑

In the Matter of Application No. 00668/82

for Registration of a Design by ACME METAL GOODS MFG. CO. INC.

‑ and ‑

In the Matter of an Examiner's objection thereto.

DECISION OF DEPUTY REGISTRAR OF DESIGNS
Acme Metal Goods Mfg. Co. Inc. lodged Application for Registration No. 00668/82 for a design applicable to a hook. The application was lodged under the Designs Act 1906 as amended by the Designs Amendment Act 1981. The latter Act introduced provision for the furnishing by the applicant of either or both a statement of monopoly and a statement of novelty, the furnishing of such statements being at the discretion of the applicant or in response to a direction by the Registrar in each case.
         In the case of the present application, the applicant elected for furnish a statement of monopoly.  When the application was considered by the Registrar under sub‑sec. 23(1), the applicant was notified that the statement was unsatisfactory.  This objection was the subject of further notifications by the Registrar and submissions by the agent for the applicant.  The agent subsequently requested to be heard in the matter in accordance with sec. 46, the agent appeared for the applicant at a hearing in Canberra on 20 July 1983.

Sec. 20 of the amended Designs Act provides for the making of applications for registration of designs, of which sub‑sec. (3) of the section specifies the requirements of an application. Sub‑secs. 20(4) and (5) additionally prescribe that ‑

"(4)An application under  sub‑section (3) may be accompanied by a statement of monopoly in respect of the design to which the application relates.

(5)Upon lodgement of an application under sub‑section (3) ‑

(a)the Registrar may request the applicant to furnish a statement of novelty in respect of the design to which the application relates; and

(b)if the application was not accompanied by a statement of monopoly in respect of the design to which the application relates and the Registrar considers it appropriate that such a statement be furnished ‑ the Registrar may request the applicant to furnish such a statement."

Section 4 of the amended Designs Act defines a statement of monopoly as follows ‑

'statement of monopoly', in relation to a design means a statement relating to the representations of an article to which the design is applied that indicates ‑

(a)those features of the representations in respect of which the applicant wishes to claim a monopoly; and

(b)those features of the representations that are to be disregarded in considering the extent of the monopoly protection;"

The representations accompanying the present application illustrate an article consisting of a hook of a particular shape.  The statement of monopoly forwarded by the applicant with the application stated ‑

"The statement of monopoly in respect of the design is as follows:

The or each desirable feature of shape, pattern, ornamentation or configuration shown in the accompanying representations separately or in any combination of two or more such features, including each such features or combination as applied to the described or any other article, and including the configuration or curves and/or bends shown in the accompanying representations for any relative lenghts of the straight portion(s) which join the curves and bends or which forms end portion(s) of the hook."

In response to an adverse notification by the Registrar in the course of his consideration of the application, the agent for the applicant proposed to amend the statement of monopoly to read as follows ‑

"A monopoly is claimed in the shape or configuration comprising the combination of curves and/or bends shown in the accompanying representations.  The relative lengths of the straight portions are to be disregarded in considering the extent of monopoly protection."

I propose to consider the matter on the basis of the last statement submitted by the applicant.
         It follows from the definition of a statement of monopoly in sec. 4 that it is required to constitute a statement ‑

.relating to the representations of an article to which the design is applied, and

.indicating the features of the representations in respect of which the applicant wishes to claim a monopoly and the features that are to be disregarded in considering the extent of the monopoly protection.

Representations in relation to an article to which a design is applied are defined in sec. 4 as drawings, tracings or specimens of the article to which the design is applied or photographs of such drawings, tracings or specimens. Such representations are required to accompany each application for registration (sub‑sec. 20(1)). The monopoly provided by registration is defined in sec. 25 as a monopoly in a design. Accordingly, in so far as a statement of monopoly is required to indicate the features in respect of which the applicant wishes to claim a monopoly under the Designs Act, it follows that any such statement must identify features visibly characterising the appearance of the article illustrated in the representations and that the totality of the features in respect of which a monopoly is claimed must constitute a registrable design.
         In view of the requirement to identify features visibly characterising the article illustrated in the representations, such features may well be restricted to features relating to the shape, configuration, pattern or ornamentation of the illustrated article.  However, it does not follow that the individual features identified must necessarily constitute a statutory design.  That requirement in my view is only required to be satisfied by the features identified collectively.
         In so far as a statement of monopoly is required to indicate features of the representations that are to be disregarded in considering the extent of the monopoly protection, the requirement that those features must be features visibly characterising the article illustrated is equally applicable.  However, since these features are only substantive elements in obtaining the monopoly provided by registration, it is not necessary for them to collectively constitute a statutory design.
         Finally, the definition of a statement of monopoly requires that it provide an indication of the features in respect of which a monopoly is claimed and the features that are to be disregarded in considering the extent of the monopoly protection.  I do not interpret that requirement as meaning that a statement of monopoly must specifically enumerate the features relevant to both purposes.  In my view, enumeration of the features in respect of which a monopoly is claimed implies that features visibly characterising the appearance of the article illustrated and not so enumerated are to be disregarded in considering the extent of the monopoly protection and are thus identified as such by that implication.  Similarly, enumeration of such features that are to be disregarded in considering the extent of the monopoly protection implies that the other features visibly characterising the appearance of the article illustrated in the representations are the features in respect of which the applicant wishes to claim a monopoly.  However, where an applicant chooses the latter course, the features which are not included among those which are stated to be disregarded must collectively constitute a statutory design.
         It follows from the conclusions above, that I consider a statement of monopoly as constituting a definition of the design for which monopoly protection is obtained by registation.  Its function can only be to enlarge the monopoly provided by registration by disclaiming ‑ either explicitly or impliedly ‑ features visibly characterising the appearance of the article illustrated in the representations and which would otherwise be material in determining the scope of the monopoly provided by registration.  That function is a distinct and separate function to that of a statement of novelty which in my view is required only to identify features of article illustrated in the representations which the applicant considers material in determining the distinctiveness of the design, the subject of the monopoly.
         In the present application, the applicant elected to enumerate the features of the article illustrated in the representations in respect of which a monopoly is claimed as well as the features which are to be disregarded in considering the extent of the monopoly protection.  The former features are specified in the terms ‑ "A monopoly is claimed in the shape or configuration comprising the combination of curves and/or bends shown in the accompanying representations.  The features to be disregarded in considering the extent of the monopoly protection are stated to be "the relative lengths of the straight portions which join the curves and/or bends or which form end portions".
         Considering the shape of the hook illustrated in the representations, I am by no means clear as to what constitutes a "bend" as distinct from a "curve".  Moreover, in so far as such distinction is present, I have considerable difficulty in identifying more than one "bend".  However, on the basis of the wording of the statement, the monopoly claimed is the shape or configuration of a hook comprising three independent combinations of features shown in the representations i.e. the combination of the curves indicated in the hook illustrated, the combination of the corresponding bends and the combination of those curves and bends together.
         The features which are to be disregarded also consist of a number of alternative features characterising the shape of the hook illustrated, i.e. the relative lengths of the straight portions which join the curves, the relative lengths of the straight portions which join the bends, the relative lengths of the straight portions which join the bends and curves and the relative lengths of the straight portions which form end portions.
         In my view, the features of the shape of the hook illustrated which are intended to characterise the monopoly claimed and the features which are intended to be disregarded are totally indeterminate.  The characterisation of those features by terms such as a "combination" of curves does not provide any clear identification of a specific element of shape.  However, even assuming the features to be identifiable, the multiplicity of the optional selections in the features for which a monopoly is claimed and those features which are to be disregarded in considering the extent of the monopoly protection result in the statement defining not one monopoly but a multiplicity of different monopolies. As registration is intended to provide a single monopoly, it follows that a statement of monopoly must be limited to define a single monopoly.
         In addition to the above deficiencies, the statement of monopoly, in my view, does not define a registrable design.  The article to which the present design is applicable is clearly made in one piece and it is inherent in the statutory definition of a design that, where the design consists of a conception of the shape or configuration of such article, the design must uniquely determine that shape in relation to the article as a whole.
         The monopoly defined in the present statement of monopoly consists only of a selection among the features which collectively determine the shape of the hook illustrated.  Essentially, those features relate to the formation of a hook by the process of bending and encompass a variety of shapes of hook.  The monopoly claimed therefore is not a design for a specific shape of hook but a generality of shapes of hook having in common only the various combinations of bends and curves of the hook illustrated.  Such a monopoly amounts in my view to a method or principle of construction and, as such, is excluded from the statutory definition of a design.
         By virtue of sec. 22B an applicant is entitled to amend his application.  Accordingly, I will not refuse the application at this stage and will allow the applicant 30 days within which to request amendment.  In the absence of such request, the application will be refused.

(C.H. FRIEMANN)