Albion Hat & Cap Company Pty Ltd

[1991] ADO 1

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Re: Design Application Number 759/88 in the Name of ALBION HAT & CAP COMPANY PTY LTD and Examiner's objection to Registration Under Section 25D

Background

On 11 March 1988 the applicant Albion Hat & Cap Company Pty Ltd lodged design application number 759/88 entitled "A Headgear". The headgear design differs in some features from a previous design: the subject of the applicant's own registered design number 97217. The applicant sought the provisions of section 25D, the relevant portion of which reads as follows:

25D. (1) Where

(a) a design (in this section referred to as the "original design"), has, whether before or after the commencement of this section, been registered in respect of an article; and

(b) the person registered as the owner, or all persons registered as owners, of the design makes, or make jointly, an application -

(i) for registration of that design, or of another design that is an obvious adaptation of that design, in respect of another article; or

(ii) for registration, whether in respect of the same article or another article, of a design that differs from the registered design only in immaterial details or in features commonly used in the relevant trade,

the application shall not be refused, and the registration made on that application is not invalid, by reason only of the previous registration, or of any publication or use, after the priority date in respect of the application for the previous registration, of the design registered on that application. (Underlining added)

The examiner objected that the differences are substantial such that the independent registration of this design is not jeopardised by the previous registration and requested the applicant to delete reference to section 25D from this application.

The attorney responded as follows:

"The assertion made by the Examiner in objection 1 is not agreed to. The parent registration No. 97,217 represented a substantial departure from the form of head gear worn by rugby players, particularly in relation to the number of "fingers" coming together at the crown. This provided the article of the parent registration with a highly distinctive appearance.

This highly distinctive appearance is retained in the design of the present application and accordingly the differences between the two designs represent immaterial detail or features commonly used in the relevant trade. These differences essentially arise because the article protected by the parent registration was made by sewing whereas the article the subject of the present application is a moulded plastic article."

The examiner maintained the objection on the basis that this design is not considered to be an obvious adaptation of the parent as the difference constitutes far more than immaterial details.

The matter was set down for hearing upon the applicant's request and after the hearing I allowed the application to proceed to registration under the provisions of section 25D. (The application is now registered design number 106,939.) The attorney for the applicant, Mr F.P. Old, requested a written decision as, to the best of his knowledge, this decision was the first on section 25D. Accordingly, I am now issuing this written decision.

The Design and Prior Designs

The attached drawings depict views of the present design (number 106939), the parent design (number 97217) and a prior design (number 89789). The latter design closely resembles a representation which Mr Old illustrated at the hearing and is referred to below as a typical prior helmet.

I note that the search conducted by the Office did not produce any designs similar to the present or parent design.

Submissions

At the hearing Mr Old presented the following submissions.

Rugby players experience head injuries and an ailment called "cauliflower ears' as the known headgear (prior to the parent design) do not provide sufficient protection for the skull and the ears.

In order to address the above problems the applicant designed a radical departure from the known headgear. The new design has a flying saucer shape and a lot of padding near the ears. Most important of all, the new design is characterised by a seven finger arrangement meeting at the crown with a mechanism to adjust crown size by means of a string. A split at the back provides a similar mechanism to adjust the equatorial circumference of the headgear. The presence of the adjustment mechanisms means that the headgear can accommodate different head shapes.

The above design is vastly different from the known headgear. A typical prior helmet has a series of bars extending from the front to the back. (Mr old illustrated this design which I found to closely resemble that of design number 89789.)

The parent headgear is basically made of fabric : a vinyl exterior and cotton interior which is good for absorbing perspiration. The two layers are sewn together. The method of manufacture however is labour intensive.

On the other hand the present headgear is injection moulded so as not to be labour intensive. The departure from the parent is mainly necessitated by the change in material. As plastic does not absorb perspiration a series of bumps are provided in the interior to reduce the points of contact between the plastic and the head and provide a good circulation of air and a cooling effect. The row of ventilation holes at the front serves similar function. These differences are very small and are not sufficient to constitute an independent design. They are also features commonly used in the sports or protective gear. For example the bumps are used in shoulder and cricket pads. Similar concepts are common in safety helmets.

I pointed out to Mr Old that:

• the visual difference between the two designs is striking; and

• there are two other differences, viz the present design has a single point instead of two points of attachment for the chin strap on each side of the helmet, and the arch of each ear portion is covered.

Mr Old commented that the difference should be analysed or determined having regard to the prior art. If the design is a radical departure (as in the case of the parent) from the known designs, the monopoly should be wide, such that minor differences would be considered infringement. If-on the other hand the article is well known such as an ashtray wherein numerous designs have been published or registered, then minor variations could satisfy the criteria of registrability under section 17. With regard to the single point of attaching the strap Mr Old submitted that it is too minor a difference and it is commonly used in the trade. Presumably it is made possible in the present design because of the relative rigidity of the injection moulded headgear. As for the ear covers he submitted that the same heavy padding is provided at the front region but the arch is covered by a thin layer for additional protection. This feature is a mere detail in comparison with the overall design of the headgear and is analogous to the wheel guard of some old cars. The model of the car would still stand out clearly disregarding the presence or absence of the wheel guard.

Mr Old re-emphasised that the highly distinctive appearance of the parent is wholly preserved in the present design. Both are overwhelmingly the same in terms of the overall configuration.

Mr Old further submitted that the applicant was advised not to apply for the registration of an independent design in respect of the present headgear because this would weaken the scope of the parent and encourage potential infringers to adapt the parent design by adding small variations which are obvious or common in the trade. As a result the value of the monopoly of the parent design would be diminished. In addition the applicant is not prolonging the term of the original design. If the applicant was not allowed to proceed under the provisions of section 25D it would withdraw the application altogether.

Decision

There are four differences between the present and the parent designs as described above. These differences may be summarised as follows, in relation to the present design:

(i) a single point of chin strap attachment on either side of the headgear,

(ii) a row of holes at the front,

(iii) many "bumps" on the interior, and

(iv) ear covers.

The issue that I have to decide is whether these differences constitute, in the language of sub-paragraph 25D(l)(b)(ii) of the Act, "immaterial details" or "features commonly used in the relevant trade".

I consider that features (i) and (ii) were commonly used in the sports/protective gear trade before 1988. The manner of attaching the strap to a helmet is a matter of convenience whether via one or two points of attachment. It makes sense that there is no need for two points of attachment in the present design as the headgear is more rigid by virtue of its material and probably by the cover or connection over the arch at the ear region. Similarly, the vent holes were so common in such things as helmets, shoes and in the underarm areas of heavy or weatherproof coats. If the present design differed from the parent only in these features it would have clearly satisfied the criteria of registration under section 25D.

Feature (iii) is in my opinion the feature that contributes most, from the visual impact point of view, to the difference between the two designs. Also I do not think that it could be readily classified as immaterial detail. However, I accept Mr Old's contention that the "bumps" are common in the trade (and were common before 1988) and they, like the vent holes, are present to perform the function of cooling. In addition, the presence of this feature, even in combination with the other features, does not alter the identity or the configuration of the parent design. I am therefore of the opinion that the present design inasfar as it differs from the parent in the first three features is capable of registration under section 25D.

Feature (iv) although not as prominent as feature (iii) presented me with the most difficulty in deciding this matter particularly when considered in combination with the other three features. Unlike the other features the presence of the ear cover does not seem to be dictated by the method of manufacture or the material. Nor do I have any evidence as to whether it is common in the trade. Mr Old suggested that it should be considered as immaterial detail analogous to the wheel guard.

In the absence of evidence to the contrary I accept Mr Old's suggestion. Also I took the following into account:

1. The applicant has provided the public with an original design (the parent) which is a radical departure from the prior headgear and should be rewarded with a broad monopoly such that minor variations from the design are considered infringement. Had the present design differed only in feature (iv) I would have readily accepted that the difference is in the nature of immaterial detail.

2. I have already concluded that even in combination with the other three features the identity of the article and the distinctive shape/configuration and characteristic features of the parent are wholly retained.

3. The article, being a (rugby) headgear, is not as common as an ashtray or a chair. Thus minor modifications are not sufficient to impart novelty.

4. Any doubt should be resolved in favour of the applicant who is not seeking an independent or prolonged monopoly.

For the above-mentioned reasons, I am satisfied that registration of the present design under section 25D should not be refused.

(RAFIK EL-KILANY)
Delegate of the Registrar of Designs
19 APR 1991
Attorneys for the Applicant: Spruson & Ferguson, Sydney