Apple Inc - [2017] ADO 7

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Apple Inc [2017] ADO 7
Case: [2017] ADO 7
Decision Date: 23 June 2017

CaseChat Overview and Summary

Apple Inc filed an application for the registration of a design under the Designs Act 2003 (Cth). Apple argued that the application contained a single design, being a display screen with a graphical user interface, but the registrar found that the application contained three separate designs. Apple argued that the three representations provided in the application were different configurations of the same design, and therefore the application contained a single design. Apple relied on the Designs Examiners’ Manual of Practice and Procedure, which states that changes in configuration will generally not constitute more than one design.

The delegate considered whether the application contained three designs or a single design, and whether the application complied with the Designs Regulations 2004 (Cth). The delegate found that the application contained three designs because the representations showed different pattern and ornamentation, not different configurations of the same design. The delegate noted that changes in configuration do not change the pattern or ornamentation of a design, and that differences in pattern and ornamentation indicate different designs. The delegate rejected Apple’s analogy to a watch with a changing dial, and found that the watch example did not apply to the present matter.

The delegate also rejected Apple’s other submissions, including its arguments about kinetic art, skeuomorphism and examination practice. The delegate found that the application did not meet the requirements of the Designs Regulations 2004 (Cth), and refused to register the designs in the application. Apple may apply for a review of this decision to the Administrative Appeals Tribunal.

The delegate’s decision highlights the importance of correctly identifying the number of designs in an application, and the consequences of a shortfall in design fees. It also clarifies the distinction between configuration and pattern or ornamentation, and how changes in each affect the number of designs in an application.

Orders