Alfred Karcher GmbH v Jinping Zhu
[2016] ADO 3
•25 August 2016
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Examination of design registration number 342842 (design number 201212473) in the name of Jinping Zhu and request for examination by Alfred Kärcher GmbH & Co. KG
Delegate: | Adrian Richards |
Representation: | Requestor: Byron Bowman of Griffith Hack, Melbourne Owner: Shelston IP Pty Ltd |
Decision: | 2016 ADO 3 Hearing pursuant to sub-section 67(3) - examination requested under sub-section 63(1) by person other than the owner or the Registrar – design not distinctive over prior art base – registration revoked |
Background
Jinping Zhu (‘the Owner’) filed an application under the Designs Act 2003 (Cth) (‘the Act’)[1] on 23 May 2012 (‘the Priority Date’). The design number allocated to the sole design in the application was 201212473 (‘the Design’). The Design was registered on 7 June 2012, allocated registration number 342842, and entered on to the Register of Designs with the following particulars:
Representations
Product Name
Window vacuum cleaner
Statement of Newness and Distinctiveness
Newness and Distinctiveness resides in the features of shape and configuration of the window vacuum cleaner as shown in the accompanying representations. The colours illustrated are for exemplary purposes only and are not intended to limit the design.
[1] Unless otherwise specified, references below to a section are references to the Act.
A request for examination of the design was filed on 2 July 2014 by Alfred Kärcher GmbH & Co. KG (‘the Requestor’). The request was accompanied with material purporting to be relevant to the newness and distinctiveness of the Design, comprising three prior art documents and some written submissions (‘the s 69 material’).
The Owner was then given a copy of the s 69 material, and invited to pay the owner’s portion of the examination fee in accordance with reg 11.05 of the Designs Regulations 2004 (Cth) (‘the Regulations’).[2] Upon payment of this fee on 17 July 2014, the Design was in order to be examined.
[2] Unless otherwise specified, references below to a regulation are references to the Regulations.
The examination commenced on 1 August 2014, resulting in a ‘Notification of Intention to Certify’ being sent to both parties which set out the examiner’s findings under s 19. The notification indicated that the examiner was satisfied that no grounds for revocation had been made out, and that a certificate of examination was to issue.
The Requestor asked to be heard on the examination on 15 August 2014. The practice and procedure for the hearing, including the filing of evidence, was then set down in a series of directions dated 15 October 2014. Both parties were initially given an opportunity to file evidence in support, but only the Requestor opted to do this. The Owner then filed evidence in answer to the Requestor’s evidence in support.
Once the parties had filed their evidence, they were invited to nominate whether they wished to be heard in person or by way of written submissions. The Requestor asked to be heard in person, and the Owner elected to rely on written submissions.
A hearing was set down for 16 September 2015 in Melbourne. I conducted the hearing in my capacity as a delegate of the Registrar of Designs. In attendance for the Requestor was Byron Bowman from Griffith Hack.
Legal framework
A design, in relation to a product,[3] means the overall appearance of the product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation) of the product.[4]
[3] Designs Act 2003 (Cth) s 8.
[4] Designs Act 2003 (Cth) ss 5, 7(1).
Section 65(1) requires the Registrar to consider whether there is a ground for revoking registration of the Design. Section 65(2)(a) provides that a ground for revocation will exist if the Design is found to not be a ‘registrable design’. Which designs are ‘registrable’ is explained in s 15:
Registrable designs
(1)A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
(2)The prior art base for a design (the designated design) consists of:
(a) designs publicly used in Australia; and
(b) designs published in a document within or outside Australia; and
(c) designs in relation to which each of the following criteria is satisfied:
(i)the design is disclosed in a design application;
(ii)the design has an earlier priority date than the designated design;
(iii)the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
Note:For document , see section 2B of the Acts Interpretation Act 1901.
In order to avoid the ground of revocation in s 65(2)(a) the Design must be both ‘new’ and ‘distinctive’ when compared to earlier designs. ‘New’ and ‘distinctive’ are both defined in s 16 as follows:
Designs that are identical or substantially similar in overall impression
(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).
(3) Subject to paragraph 15(2)(c), the newness or distinctiveness of a design is not affected by the mere publication or public use of the design in Australia on or after the priority date of the design, or by the registration of another design with the same or a later priority date.
The novelty limb of the test relates to absolute identity, working as a filter for designs that correspond exactly in appearance. As will become clear below, there are some differences between the Design and the Earlier Design, so it is not novelty that is at issue in this examination, but the second limb of the test being ‘distinctiveness’. In that regard, deciding whether designs are substantially similar in overall impression requires a weighing of the factors prescribed in s 19, the relevant parts of which are reproduced below:
Factors to be considered in assessing substantial similarity in overall impression
(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design--have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
Prior art in the section 69 material
One of the prior art documents disclosed in the section 69 material was primarily in a language other than English, and no translation has been filed. The parts of the document that are in English make it clear that it is a design patent from the People’s Republic of China. Being a patent document, by virtue of the ‘Internationally agreed Numbers for the Identification of Data’ appearing on it, I can readily ascertain a number of other features. For example, that the application number is ZL 200830121595.1. Relevant for present purposes is that it claims convention priority from the other two prior art documents. It is therefore unnecessary to set out any further details of the Chinese design patent.
The remaining two prior art documents are Certificates of Registration of European Community Designs. The Requestor submits that they were published on 28 January 2008, but the certificates show that the designs were published in Part A.2 of the Community Designs Bulletin on that date. The Vademecum to the Community Designs Bulletin[5] explains that Part A.2 is the first publication of designs with a deferred publication, and does not include many details such as representations or the product name the date of publication. As such, publication in Part A.1 is the relevant date for present purposes. This did not occur until 2 May 2008, which is nevertheless well before the Priority Date.
[5] Accessible at >
The Requestor is the owner of both of the European Community Designs and the name of the product for both is given as ‘Window cleaning appliances’. Their numbers and representations are reproduced below:
Number
000846365-0001
Representations
Number
000846365-0002
Representations
These two sets of representations illustrate the same design in two ways: 000846365-0002 in line drawings and 000846365-0001 in colour and shading. I therefore refer to both of these prior art documents below as simply ‘the Earlier Design’.
Evidence
The evidence filed in this proceeding consists of the following declarations:
Evidence in Support
Statutory Declaration of Byron Bowman, Principal at Griffith Hack and patent attorney for the Requestor, made 15 December 2014 with exhibits BNLB-1 and BNLB-2 (‘Bowman’).
Statutory Declaration of Ralph Diehl, Head of Development Indoor Products at the Requestor, made 10 December 2014 with exhibits RD-1 to RD-3 (‘Diehl’).
Statutory Declaration of Carolin Götz, Manager of Product Management Home and Garden at the Requestor, made 10 December 2014 with exhibits CG-1 to CG-4 (‘Götz’).
Statutory Declaration of Michael Meyer, Head of Design Home and Garden at the Requestor, made 7 January 2015 with exhibits MM-1 to MM-7 (‘Meyer’).
Statutory Declaration of Ulrich Wagner, specialist in anti-counterfeiting at the Requestor, made 10 December 2014 with exhibits UW-1 to UW-10 (‘Wagner’).
Evidence in Answer
Statutory Declaration of Claire Heffernan, professional cleaner, made 16 April 2015 with exhibits CH-1 to CH-4 (‘Heffernan’).
As well as the declarations outlined above, the Requestor included two responses to a questionnaire in its evidence in support (‘the Questionnaires’). The Questionnaires have been completed by Courtney Gabb of The Good Guys in Brighton, Victoria and Grant Sinko from Godfreys in Parkdale, Victoria. While they are not in declaratory form, they are signed and dated 10 December 2014. These are, in essence, opinions on the similarity of the Design to the Earlier Design, and submissions on the freedom of the creator to innovate.[6] Ms Gabb claims to be familiar with the Earlier Design, while Mr Sinko claims to be familiar with another design known as the ‘Hoover jive’.
[6] Paragraph 19(2)(d).
Bowman annexes two ‘Google’ image search results for the following words: window vacuum cleaners images. The first set of results show images from before the Priority Date and the second set show those from the Priority Date to the date the search was conducted.
Diehl, Götz and Meyer offer largely similar testimony. In varying degrees of detail each provides the history of the Requestor’s development of the Earlier Design, submit that the Earlier Design was the first handheld window vacuum cleaner on the market, and offer an opinion on the similarity of the Design to the Earlier Design. On this last point, Mr Meyer goes beyond offering his own opinion on similarity by introducing evidence that the Design was awarded equal fourth place amongst ‘“the most flagrant” (design) imitations’ at the 2013 Ambiente consumer goods trade fair in Frankfurt.
Mr Wagner also offers some opinion on the similarity of the designs, but the main content of his declaration outlines several successful revocation actions taken by the Requestor against the Owner’s design patents in China. Wagner also discusses enforcement activities in relation to the Earlier Design that the Requestor has undertaken in the European Union and China, which has concerned the Design as well as several other designs disclosed in the Requestor’s evidence.
Diehl, Götz, Meyer and Wagner all annex a document titled ‘Competitor Overview Window Cleaner 2014’. While this document was produced after the Priority Date, it demonstrates a wide variety of overall visual appearances in which this product has since manifested.
Ms Heffernan offers a detailed comparison of the Design and the Earlier Design, and puts forward her opinion of how constrained or otherwise a designer might be in creating a product of this type.
Submissions
It is convenient first to outline the nature and purpose of the product to which the Design and the Earlier Design relate. Mr Bowman presented at the hearing physical specimens of three examples of window vacuum cleaners, the images and descriptions of which were evidence. The specimens were of the Design, the Earlier Design, and the ‘Hoover jive’ (below).
The purpose of the product is to remove fluid from windows. It differs from a manual squeegee by the inclusion of a reservoir and a vacuum motor (as well as motor-related fittings such as switches and exhaust vents). These additions allow the product to suck in window washing fluid when it gathers beneath the squeegee head, and deposit it in the reservoir. The motor provides light suction, similar in scale and power to a ‘Dustbuster’.
The parties agree that the Design and Earlier Design share a number of visual similarities. In particular: distinct head and body sections, side profiles that taper from base to tip and bends at the transition from body to head, an enclosed handle in their body sections, a squeegee blade in their head sections, a reservoir below the handle, and a motor housing at the base. The point of contention is whether these similarities appear in both designs as a matter of ergonomic or technological constraint. For its part, the Owner submits that ‘most of these similarities highlight functional aspects that are required for window vacuum cleaners to operate effectively’. In contrast, the Requestor submits that Mr Bowman’s ‘Google’ image searches and the ‘Competitor Overview Window Cleaner 2014’ indicate there is a substantial freedom for the creator to innovate.
The Owner submits that Mr Byron’s ‘Google’ image searches from before the Priority Date are potentially misleading, since they include larger scale floor standing units. The Owner is correct when it submits that floor standing window vacuum cleaners are the same product as the Design. Nevertheless, I do not consider their inclusion in the evidence misleading. These searches are demonstrative of the range of window vacuum cleaners that existed at the relevant time. Since they perform a similar function, I consider floor standing window vacuum cleaners are similar products[7] to hand-held window vacuum cleaners, and therefore can inform the standard of the informed user. In fact, the Owner relies on this principle. The Owner’s sole declaration in evidence by Ms Heffernan states that she ‘has not used a window vacuum cleaner of the kind the subject of [the Design]’, yet the Owner submits that her views are representative of the standard of the informed user.
[7] Section 19(4).
Another point of contention relates to the class/es of persons who will represent the standard of the informed user. The Applicant submits that the standard requires the point of view of a person ‘with a high level of familiarity with the features and functions’ of a window vacuum cleaner, such as a professional cleaner. The Requestor disputes this, pointing out that the battery life of this type of product is around 20 minutes, and the battery is not replaceable. As such, this product is likely to be about as useful as a ‘Dustbuster’ to a professional cleaner. Since it is a small appliance aimed at domestic use, the Requestor asserted that the informed user was more likely to comprise sales assistants who retail handheld window vacuum cleaners.
Discussion
The standard of the informed user
The Owner’s submission that this standard is one of a ‘high level of familiarity’ is excessive. Yates J has observed that the legislation ‘does not impose a standard higher than familiarity.’[8] The standard therefore, plainly stated, is that of a person who is well-acquainted with handheld window vacuum cleaners or similar products.
[8] Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) 214 FCR 323, 337 [67].
Turning to the class or classes of persons that might represent the standard of the informed user, I note the parties’ submissions come at this from two, similar angles. Each has elected to appeal to the authority of a professional, but in two different settings. The Owner has put forward a professional cleaner, Ms Heffernan and the Requestor has nominated a pair of retail sales assistants, Mr Sinko and Ms Gabb. A partial exception to this profession-based approach is Ms Gabb who, as well as selling the Earlier Design, uses it at home fortnightly. People who habitually use and are familiar with handheld window vacuum cleaners in the domestic setting, such as Ms Gabb, likely form the largest class. Retail sales assistants such as Ms Gabb and Mr Sinko, knowledgeable of the features and workings of these products for the purposes of encouraging people to buy them, also form a class. The points of view of sales people and end users are likely to be significantly aligned. Visual features that are perceived as important by consumers are very likely to be highlighted by a salespersons, and salespersons are equally likely to convey their own perceptions as to the importance of visual features to consumers. The perceptions of both salespersons and end users should in general be given significant weight when considering the other factors under s 19.
Since this is a small home appliance, professional cleaners do not readily form another class of people familiar with the product. That said, many professional cleaners would be generally familiar with other products that perform a similar task. This would include manual squeegees, and more relevantly, larger scale floor-standing window vacuum cleaners. Ms Heffernan’s testimony broadly follows these lines. She declares that she has cleaned a very large number of windows but not once with this type of product. She nevertheless declares that she is ‘familiar with their operation and understand[s] how [they] are used’. Having a working understanding of the efficacy (or otherwise) of a variety of equipment for removing liquids from windows would permit a comparative enquiry into the perceived efficacy of a variety of designs in relation to handheld window vacuum cleaners. This is relevant, since the standard of the informed user permits the perspective of people familiar with similar products. Perceptions of people from this class should therefore be given some weight, particularly where the visual features being discussed relate to the perceived efficacy of the product.
There is at least one more class of persons who readily fall within the ambit of informed users in relation to handheld window vacuum cleaners. That is, the people who develop and bring them to market. The Diehl, Götz and Meyer declarations provide some slight insight into the perspectives of this class, and their view have also been given some weight below.
In Meyer, the jury that awarded the Plagarius to the Design in 2013 consisted of ‘specialists from diverse sectors’, spanning design, intellectual property, business and media. Experts in design per se will not constitute a class of informed user, since they generally lack the requisite familiarity with the product (or similar products). There is no evidence of any of the judges’ levels of familiarity with handheld window vacuum cleaners or similar products. On balance it seems more likely that these people are experts in design, and so their views should not be given any weight.
Statement of Newness and Distinctiveness
The Statement of Newness and Distinctiveness (‘SoND’) for the Design includes the disclaimer: ‘The colours illustrated are for exemplary purposes only and are not intended to limit the design.’ The wording of 19(2)(b) is such that the effect of this disclaimer is left unclear. However, it is unnecessary to consider this in any detail here. The colour of the Design is not at issue, nor are any of its two dimensional features.
The SoND asserts that the Design’s newness and distinctiveness reside in its shape and configuration. The effect of this is clear enough. The SoND asks me to pay particular regard to all of the visual features of the Design, aside from pattern and ornamentation (that is, the colour variation appearing on the surface of the Design). In light of this, s 19(2)(b) requires that I pay particular regard to all of the three dimensional features of the design. The effect of this SoND on the s 19 enquiry is therefore virtually nil, since it provides no specific feature or features upon which to focus.
Freedom of the creator of the design to innovate
As outlined in the summary of submissions, the Owner has stated that ‘most’ of the visual similarities between the Design and the Earlier Design can be reduced to requirements of function. In particular, it highlights the need for a handle, a body, and a squeegee blade that is placed at a useful angle. These three requirements are difficult to question on their face, but incorporating them into a product does not necessarily lead the creator to come up with the Design. The ‘Hoover jive’ above demonstrates, for example, how the handle can be placed at the bottom of the unit. Ms Heffernan’s evidence is that such a handle placement is less desirable, since this would leave the design top-heavy, preferring a handle placed toward the centre. The ‘Vorwerk Kobold VG 100’ (below) which appears in the ‘Competitor Overview Window Cleaner 2014’ incorporates all three requirements, including a handle at centre, but does not bear a passing resemblance to the Design.
I note that in their abrupt departures from the overall shape and configuration of the Design, both the ‘Hoover jive’ and ‘Vorwerk Kobold VG 100’ have sacrificed a feature: the ability to stand on their base, therefore keeping the squeegee end elevated. Given the number of products that offer this feature, it is arguable that market demand acted to constrain the creator of the Design in this respect. However, within the even narrower field of handheld window vacuum cleaners that stand on their base, the post art shows a significant degree of variation in visual features. I have extracted from the ‘Competitor Overview Window Cleaner 2014’ and set out in Annexure A examples of the wide variety of designs within this narrower category.
Looking through the post art in Annexure A, it appears that designs in this sub-category of product either must have, or are expected to have the following features: a distinct head and body, where the head protrudes at an angle to and is wider than the body, and a handle around the middle of the product. There is significant variation in visual appearance with which these essential features have been incorporated into the examples in the post art, and there is even greater variation in relation to the non-essential features, such as the overall shape of the body. Given this, the Owner’s submission that ‘most’ of the similarities between the Design and the Earlier Design can be reduced to requirements of function or market expectation is not credible. Even when acknowledging that there could be a market expectation that the Design stand on its base, the examples in Annexure A show that the creator was still relatively free to innovate with regard to significant areas of shape and configuration.
State of development of the prior art base
When the prior art base consists of a great many designs, through a familiarity with the range of designs in existence, the informed user will typically have a keener awareness of smaller differences. The opposite is the case where the prior art base contains very few designs. In this situation, a design with slight visual differences to one of the examples that came before will typically be judged as substantially similar in overall impression by the informed user.
As noted by the Owner, at the Priority Date there were larger floor standing machines with flexible hoses attached to cleaning wands. However, the evidence shows that the only handheld window vacuum cleaner in existence before the Priority Date was the Earlier Design. That the Earlier Design was the only handheld window vacuum cleaner on the market for a time is corroborated by Messrs Meyer and Diehl. Both declare that at the time of its development the Earlier Design had no competitors. As Mr Meyer put it, the Earlier Design created ‘a new archetype of products’. The art base for the product at the Priority Date was therefore not just poorly developed, bar one example it was vacant. In the present enquiry slight visual differences must be given less weight in the assessment of overall impression.
Amount, quality and importance of the similarities
To illustrate the discussion of similarities and differences that follow, I have arranged below a selection of views of the Design and the Earlier Design side by side.
Design
Earlier Design
(‘Side Views’)
Design
Earlier Design
(‘Handle Views’)
Design
Earlier Design
(‘Reservoir Views’)
The parties’ evidence on overall shape ranges from Ms Heffernan’s observation that ‘despite noting [unspecified] similarities…there are sufficient differences…such that [they] are not substantially similar in overall impression’ to Mr Sinko’s assertion that the Design ‘looks as though it is a complete knock off and came from the same factory’. My own observation is that, at least at first blush, a strong similarity is apparent.
Upon closer inspection of the Side Views I note that the angle of the squeegee head relative to the body is more obtuse in the Design. A result of this difference in angle is a slimmer area in the Design between the top of the handle and the head. This difference in angle also accounts for the apparent variation in relative width of the head in the other two views above. Ms Heffernan considers the Design to be an improvement on the Earlier Design in this regard, because the angle of the head in the Design would provide greater visibility of the surface being cleaned. On the other hand, the Requestor, supported by Ms Gabb and Mr Sinko’s questionnaires, submits that the heads are both at around the same angle. The parties’ disagreement on this comes down to characterisation. They are indeed roughly the same angle, but the difference in angle is noticeable and as Ms Heffernan has indicated this is likely to be of some significance to the informed user, so this is to be given some weight in deciding on the ultimate question of overall impression.
The Handle and Reservoir Views show that the base of the Design is wider and is more curved than the Earlier Design. Mr Sinko also notes this difference, charactering the base of the Design as more triangular than the Earlier Design. Ms Gabb, on the other hand, says that the designs are the same in this area. Ms Heffernan’s submission on this is similar to Mr Sinko, adding that the relative width of the base of each design would be visible during use. The quality and importance of this apparent difference has not been discussed by either party. As with the angle of the head, it is visible and so must be afforded an appropriate weight. But unlike the angle of the head, I have not been presented with a reason why the triangular base appearing in the Design might be accorded particular value by persons familiar with these products. The evidence demonstrates that some, but not all, informed users will spot this difference when comparing the designs.
The shapes of the buttons, base plate, reservoir catch and vents are all quite different. Again, no evidence of the significance of these features has been offered by the Owner. Mr Sinko has commented that he considers differences in the shape of buttons to be immaterial, and I agree with this sentiment. In the context of small domestic electrical appliances, differences in the shapes of small component parts are unlikely to impact on the overall impression of an informed user. These different catches, vents buttons and plates do not rise above the level of mere workshop variations, and shall be given very little weight.
Turning to configuration, the sole apparent distinction is the placement of the button on the thumb rest in the Design, as opposed to the index finger ‘trigger’ position of the button inside the handle of the Earlier Design. Ms Heffernan’s opinion is that it ‘is much better’ to have the button on the outside, because it is ‘clearly visible to the operator’. I must approach Ms Heffernan’s opinion here with significant caution. She had admitted that she has not used this type of product, and unlike her opinion on the angle of the head her opinion on the positioning of the button does not seem to derive from her own experience as to the efficacy of similar products. That said, while it is plainly the case that this button is visible, the Owner has not explained why the informed user would consider this to be an improvement. However, it is likely that the button on the Earlier Design would also be readily perceived by the user. It is visible, albeit from a different angle, and would naturally come into contact with the index finger in normal use. Regardless, I am inclined to consider this difference in configuration as more like a workshop variation than a significant departure from the prior art.
The Owner has put presented two earlier decisions of this office as standing stand for the propositions that smaller differences can be given greater weight when the features are prominent in use,[9] or when the differences offer a functional advantage.[10] In general terms, given the all-pervading and varying nature of the standard of the informed user in the context of s 19, it will often be difficult to extract general propositions of law from earlier decisions. It is particularly difficult to do this where an earlier decision related to a very different product, in a different industry and with different informed users as is the case with both of these earlier decisions.
[9] Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1 (‘Bitzer’).
[10] Removerite Incorporated [2013] ADO 7 (‘Removerite’).
In Bitzer, the products were compressors for refrigerants – an internal component of a much larger machine. These ‘are not typically found on the shelf of a retail store, nor are they likely to be bought for their aesthetic appeal’. The classes of people that would fall within the standard of the informed user were held to be ‘engineers and other designers of larger machines into which these compressors are integrated, and people that design, repair or replace these compressors’. Those people were held to be of a ‘specialised nature’ that they ‘typically looks first to function, then only to form with an eye as to whether the compressor will fit the proposed application’. In that context, a large prior art base, very small freedom to innovate, and the relative importance to the informed user of the piston head cover combined led to a finding of distinctiveness.
Removerite concerned a pair of screws which used broken lines and their SoNDs to draw particular attention to their heads. The prior art base for screws is a ‘mature technical field’, and so the addition of a tapered shank and enlargement of the flange to the head of those screws over the examples in the prior art were held to be sufficient for a finding of distinctiveness. While it is certainly the case that an informed user is in general likely to pay attention to some visual difference that signifies a functional advantage, questions of importance and quality of visual features are elements of just one of the factors in s 19. Functional advantage must therefore be weighed in its context against all of the other factors present in the statutory enquiry.
Distinctiveness - conclusion
As a starting point the shape and configuration of the Design and the Earlier Design share a degree of similarity. This has been acknowledged in nearly every declaration (except Bowman), including the sole declaration led by the Owner. The Requestor has convincingly shown that, given the post art, the freedom of the creator of the Design to innovate was relatively unconstrained. The function of this type of product certainly does not dictate that the same configuration, and nearly the same shape be adopted in all cases.
The angles of the heads are different, and this has had some impact on the overall shapes visible in the Side Views, particularly toward the top. Further, the angle of the head in the Design arguably provides a functional advantage. The rest of the differences have at best been shown to be noticeable, but do not rise to the level of advantageous. At worst, many of the differences, such as the shape of component parts, are mere workshop variations. In the context of overall impression, given the immediately apparent similarity of the Design to the Earlier Design, these are not sufficient to alter the overall impression. I find that the Design is substantially similar to the Earlier Design, and is therefore not distinctive.
The state of development of the prior art base was a potent factor in arriving at this finding. It is a relatively rare event that product will create ‘a new archetype of products’, and necessarily even more uncommon for the Designs Office to be called to examine a second entrant into that new art field. In such circumstances, the second entrant must in most cases visually differentiate substantially from the first, or risk being found to be not distinctive. In my opinion, when creating the Design, the Owner has not overcome this hurdle.
Decision and costs
Having found that the Design is not distinctive over the prior art, it follows that the Design is not registrable and a ground for revocation has been made out. There does not appear to be any amendment to the register that would remove this ground for revocation.
The design will be revoked one month from the date of this decision. If the Registrar of Designs has been served with a notice of appeal from this decision before that time, I direct that revocation shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this examination should be in accordance with the Court’s order or direction.
The Requestor has sought an award of costs. The ordinary rule is that costs follow the event. I award costs against the Owner under s 127 in the applicable amounts set out in Schedule 3 of the Regulations.
Adrian Richards
Hearing Officer
Trade Marks and Designs Group
25 August 2016
Annexure A
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