Apple Inc
[2017] ADO 7
•23 June 2017
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for registration of design number 201511115 in the name of Apple Inc.
Delegate: | Adrian Richards |
Representation: | Carl Harrap and John Dower of FPA Patent Attorneys Pty Ltd |
Decision: | 2017 ADO 7 Pre-registration formalities check under sections 39 and 40 of the Designs Act 2003 (Cth) – number of designs disclosed in the application – changes in configuration will not result in differences to pattern and ornamentation – application found to contain more designs than identified by the applicant – registration of the designs refused |
Background
On 2 March 2015 Apple, Inc (‘the Applicant’) filed an application for registration (‘the Application’) under the Designs Act 2003 (Cth) (‘the Act’). Details of the Application as filed which are relevant to the discussion that follows are set out below:
Number of designs in the application
1
Product(s)
Display screen with a graphical user interface
Statement of Newness and Distinctiveness
Newness and distinctiveness is claimed in the features of pattern and/or ornamentation of a display screen as shown in solid lines accompanying representations.
Representations
Accompanying these three representations is a schedule of figures, with the following explanatory text:
FIG. 1 Front view of a first configuration of the display screen
FIG. 2 Front view of a second configuration of the display screen
FIG. 3 Front view of a third configuration of the display screen
The appearance of the display screen sequentially transfers between the images shown in Figures 1 to 3.
Since the Application was furnished with a request for registration and was assessed as meeting the minimum filing requirements, the Application proceeded to a pre-registration formalities check.
The formalities check produced an adverse notice on 31 March 2015. The notice relates to a single issue, a finding that the Application contains three designs, despite a claim in the Application that only one design was disclosed. Filing fees being payable for each design in an application, the consequence of such a finding is a shortfall in fees. The notice therefore asked the Applicant to either remove two of the designs and pay no extra fee, or pay further design fees (equivalent to the filing fee per design) for each of the extra designs that the Applicant chose to retain in the Application.
The Applicant replied on 27 May 2015, drawing attention to the wording in the schedule of figures, which refer to each representation being a different ‘configuration’ of the same display screen. The response also referred to the Designs Examiners’ Manual of Practice and Procedure, which indicates that alterations in configuration will generally not constitute more than one design. For example, it states that:
Changes in the configuration of the design are quite acceptable. For example: a telephone shown with, and without the receiver on the cradle is still showing the same design. A container shown with the lid on and the lid beside it are also showing the same design.[1]
[1] Designs Examiners’ Manual of Practice and Procedure, Part 1, 14.3(h).
By reading the Applicant’s own reference to ‘configuration’ together with this discussion in the manual, the Applicant suggested that no issue existed at formalities. In the event this response did not convince the examiner to permit the contents of the Application to proceed to registration as a single design, the Applicant also requested to be heard. The examiner was not convinced, issuing a second adverse report on 29 May 2015. As a result the Applicant was issued with an invitation to pay the fee associated with its earlier hearing request.
A hearing was set down for 10 November 2015 in Canberra, which I conducted as a delegate of the Registrar of Designs. Messrs Carl Harrap and John Dower from FPA Patent Attorneys Pty Ltd appeared on the Applicant’s behalf.
Legislation
The provisions of the Act relevant to the remaining discussion are set out below:
5 Definitions
…
design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.
Note: See also section 8.
…
product has the meaning given by section 6.
…
visual feature has the meaning given by section 7.
…
6 Definition of product
(1) For the purposes of this Act, a thing that is manufactured or hand made is a product…
7 Definition of visual feature
(1) In this Act:
visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product.
(2) A visual feature may, but need not, serve a functional purpose.
(3) The following are not visual features of a product:
(a) the feel of the product;
(b) the materials used in the product;
(c)in the case of a product that has one or more indefinite dimensions:
(i)the indefinite dimension; and
(ii)if the product also has a pattern that repeats itself—more than one repeat of the pattern.
39Formalities check—applications in respect of one design only
(1) This section applies to a design disclosed in a design application if:
(a)the design is the only design disclosed in the application; and
(b)the applicant has requested that the design be registered.
(2) The Registrar must register the design if the Registrar is satisfied that:
(a)the design application satisfies the formalities check specified in the regulations; and
(b)if the design is purportedly a common design in relation to more than one product—that the design is a common design in relation to each product; and
(c)the Registrar is not required to refuse to register the design under subsection 43(1).
40Formalities check—applications in respect of more than one design
(1) This section applies if:
(a)more than one design is disclosed in a design application; and
(b)the applicant has requested registration of one or more of those designs.
(2) The Registrar must register a design requested to be registered if the Registrar is satisfied of the following:
(a)that each product to which the design relates belongs to the same Locarno Agreement class;
(b)if the design requested to be registered is purportedly a common design in relation to more than one product—that the design is a common design in relation to each product;
(c)that the design application satisfies the formalities check specified in the regulations;
(d)that the Registrar is not required to refuse to register the design under subsection 43(1).
The formalities check mentioned in s 40 above appears in the Designs Regulations 2004 (Cth), the relevant part of which is reproduced below:
4.05Formalities check--applications in respect of more than 1 design
(1) For paragraph 40(2)(c) of the Act, the formalities check is confirmation, by the Registrar, that:
…
(g)the number of designs disclosed in the design application is the number of designs identified, by the applicant, as being separate designs disclosed in application…
Submissions
The Applicant’s written submissions expand on its 27 May 2015 response to the examiner, in relation to the Application’s arguments around ‘configuration’. At the hearing, the Applicant’s representatives raised three other matters which were claimed to be relevant to the present matter, in relation to ‘kinetic art’, ‘skeuomorphism’ and a potential inconsistency with examination practice. I deal with each of these in turn in my discussion below.
Discussion
The Statement of Newness and Distinctiveness accompanying the Application claims newness and distinctiveness certain elements of the ‘pattern and ornamentation’ that appear in the representations, while the schedule of figures accompanying the representations refers to three ‘configurations’ of the display screen. In order to understand these aspects of the Application, the nature of each of these terms bears some explanation.
Under long standing but now repealed designs legislation, in order to meet the definition of ‘design’ therein, features of ‘shape, configuration, pattern or ornamentation applicable to an article’ had to be disclosed.[2] This earlier Australian designs legislation was modelled on legislation from the United Kingdom. Being so central to the availability of protection under their respective designs legislation, questions of whether a feature fell within the meaning of either ‘shape’, ‘configuration’, ‘pattern’ or ‘ornamentation’ have on a number of occasions been considered by courts of both of those jurisdictions.
[2] Designs Act 1906 (Cth) s 4.
Under the Act ‘design’ is no longer defined directly by features of shape, configuration, pattern or ornamentation, but instead by reference to ‘visual features’, which in turn has an inclusive definition. Apart from this minor departure, the discussions of the earlier decided cases remain instructive (and, in many cases, binding) upon a reading of what visual features may or may not be considered ‘shape’, ‘configuration’, ‘pattern’ or ‘ornamentation’. In the present case, three of these categories of visual features are explicitly referred to in the Application, and the fourth (shape) is readily apparent in the representations.
The decided cases reveal that what at first blush might appear as four categories of ‘shape, configuration, pattern and ornamentation’ can be aggregated into two. Shape and configuration are the three dimensional visual features of a product, while pattern and ornamentation are generally those features in two dimensions.
Shape and configuration are for all practical purposes considered as synonymous. Each signifies something in three dimensions; the form in which the article itself is fashioned. "Pattern" and "ornament" can, I think, in the majority of cases be treated as practically synonymous. It is something which is placed on an article for its decoration. It is substantially in two as opposed to three dimensions. An article can exist without any ornament upon it, whereas it can have no existence at all apart from its shape and configuration. As Lord Justice Lindley said in Re Clarke’s Registered Design, “a design applicable to a thing for its shape can only be applied to a thing making it in that shape.”[3]
Shape and configuration signify something in three dimensions, being the form in which an article is itself fashioned.[4]
[3] Kestos v Kempat Ld (1936) 53 RPC 139, 152 (citations omitted).
[4] Foggin v Lacey (2003) 57 IPR 225, 236 [49].
Cases where pattern and ornamentation have been held to extend into the third dimension still tend to fall within the notion of surface decoration, such as the ribbing on a hot water bottle.[5] The most relevant principle to draw from this in the present matter, however, is that configuration is not a feature that exists in two dimensions.
[5] Cow & Co Ltd v Cannon Rubber Manufacturers Ltd (1959) 76 RPC 240, 347.
Providing representations that show more than one shape under the guise of being one design will always result in problems for an applicant under the Act. At the lower end of the scale this may simply be the result of inconsistently drawn representations. Where that is not the case, it is highly likely that what has been filed is more than one design. This can be contrasted with a situation where one fixed shape is shown in more than one configuration, as in the manual discussion referred to by the Applicant and reproduced above. A simple illustration of this is an older style telephone depicted in one representation with the receiver in its cradle, and in another with the receiver placed beside the base. Another example of this was offered in the Applicant’s written submissions in respect of registered design 331605 with the product name ‘transformable toy’, two configurations of which are reproduced below:
Configuration is neither shape nor is it a feature in two dimensions. It seems a special category of visual feature, since changes to configuration can change the outward appearance of a product, yet the design both conceptually and legally will remain the same. Differences to pattern and ornamentation align more with differences in shape than mere changes to the configuration of that shape. It follows that a product of fixed shape but depicted with more than one pattern or ornamentation will be a different design in each case.
The Applicant submits that there are some changes in configuration that will also result in changes to pattern or ornamentation. To illustrate this point, it has provided the following set of diagrams in respect of a watch.
As the winder on the right side of each figure turns clockwise, the numeral that appears in the window in the bottom left corner shifts from 7 to 8 and then 9. While this is clearly a change in configuration which results a change in the outward appearance of the product, it would not be correct to see this as a change to the pattern or ornamentation of the watch. While the window that showed a 7 later shows 8, but the 7 that has passed from view is still part of the pattern and ornamentation of the watch. It is merely obscured from this particular perspective in this particular configuration. Indeed, in order for this feature to function properly the dial upon which these numerals appear would have on it each day that could possibly fall within a month. The pattern and ornamentation is therefore fixed, but only part of that pattern and ornamentation is visible at any one time due to changes in only configuration.
Taking its illustration a step further, the Applicant submits that:
In another implementation the watch may incorporate an LED, LCD or other display to show the numbers. How implementation of the design is achieved is an irrelevant consideration for the purposes of the design. In both cases there is a visual feature in the form of pattern or ornamentation that represents a different configuration of the same design.
As should be apparent from my earlier discussion, this analogy is flawed. In the case of a watch with a physical dial, its pattern and ornamentation have not changed. These two dimensional features have merely moved due to a change in the configuration of the watch’s mechanisms. In the case of a watch implemented with ‘an LED, LCD or other display’ a change in the numeral would mean that one two dimensional feature had disappeared and another appeared in its place. Since these are changes only to two dimensional features, they can have nothing to do with configuration. As the Applicant’s example of the watch shows, an understanding of the product is necessary in order to determine whether a change in appearance is due only to a change in configuration or to a more fundamental change in visual features. This is far from an irrelevant consideration.
The Applicant’s watch analogy is helpful in relation to the present matter. While the contents of the Application do not concern a watch, it certainly concerns three slightly different appearances of ‘an LED, LCD or other display’. The representations show the screen is a fixed shape and configuration, and therefore differences between the representations are to the pattern and ornamentation alone. As has been established, differences to two dimensional features cannot be as a result of a change in configuration, despite the suggestion that appears in the schedule of figures.
At the hearing the Applicant’s representative referred to claims made under the Copyright Act 1968 (Cth) relating to, what the applicant in that matter referred to as ‘kinetic art’.[6] The claims brought included copyright in respect of the visual appearance made as a result of different coloured sand and water sandwiched between two pieces of glass inside a frame, known as ‘moving sand pictures’. In this interlocutory matter that aspect of the applicant’s claim was dismissed ‘because [the creator of the object] does not directly bring about the spectacles which result from adjustments of the position of the product’.[7] I suppose the suggestion here then is that the Applicant has directly brought about the spectacle of the transitioning images as they are set out in the representations. However, all that would follow from this is that the Applicant could potentially be afforded some protections under the Copyright Act 1968 (Cth), a point that is not at issue in the present matter.
[6] Komesaroff v Mickle [1987] VR 703.
[7] Ibid 710.
Another submission made at the hearing relates to the design concept of skeuomorphism. My understanding is that this has a number of possible meanings, but in relation to graphical user interfaces, it can most relevantly refer to the use of shading to produce a three dimensional appearance of that interface on the two dimensional plane of the screen on which it appears. A contemporary example of this is in the burgeoning field of smartwatches. Skins applied to their graphical user interfaces are often crafted to make the flat face of the display screen appear as though it has the depth of a mechanical watch. The operative term here is ‘appear’. The mere illusion of three dimensions on a flat surface is still a two dimensional feature.
Finally, at the hearing the Applicant’s representatives pointed out that there may be an unjustified inconsistency in the interpretation of representations at this pre-registration stage and at examination. As I have recently found, it is appropriate for the visual features of a design to be viewed as though the product were ‘at rest’ when the design’s newness and distinctiveness is assessed.[8] The Applicant correctly points out that, should the contents of the Application be registered as is, and then later examined, the examiner would in effect come to view all three representations as the same design (that is, three representations of a blank screen). However, it does not follow that for the purposes of formalities only one design is disclosed in the application. At this point the question is simply whether the number of designs disclosed in the Application is the same as the number identified by the Applicant. The Act leaves over to examination the question of whether any of the visual features the Applicant has elected to include in its representations are distinguishing features of the product. Bringing that assessment forward to formalities could also result in significant uncertainty. It would remain open to the Applicant at any point between now and at examination to assert that some or all of the pattern and ornamentation that appears in the representations are in fact fixed visual features. If the Applicant did this, the examiner would not necessarily come to view the three representations as a single design.
[8] Apple Inc [2017] ADO 6.
Decision
I have found above that due to differences in pattern and ornamentation appearing in the three representations, the Application contains three designs. Therefore I am not satisfied that the Application meets the requirements of reg 4.05(1)(g). The Applicant has already had the opportunity to amend the Application to overcome this deficiency. I refuse to register all of the designs in the Application that contains design number 201511115 pursuant to s 43(2) of the Act.
Pursuant to s 136(d) of the Act an application for a review of this decision can be made to the Administrative Appeals Tribunal under the Administrative Appeals Tribunal Act 1975 (Cth). If an application to review the decision is made on or before one month from this decision, the fate of the Application will be subject to a determination by the relevant body.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
23 June 2017
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