Apple Inc
[2017] ADO 6
•14 June 2017
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination of design number 201316431 (registered design number 353361) in the name of Apple Inc.
| Delegate: | Adrian Richards |
| Representation: | Carl Harrap and John Dower of FPA Patent Attorneys Pty Ltd |
| Decision: | 2017 ADO 6 Examination of a design under section 63 of the Designs Act 2003 (Cth) – consideration of the practice of viewing a product ‘at rest’ – interpretation of the meaning of ‘visual features of a product’ – design found to be not new over the prior art base – registration to be revoked |
Background
On 6 December 2013 Apple, Inc (‘the Owner’) filed an application for registration of a design (‘the Design’) under the Designs Act 2003 (Cth) (‘the Act’). The Design was entered on the Register of Designs on 21 January 2014 with the following particulars:
Product name
Display screen
Statement of Newness and Distinctiveness
Newness and distinctiveness is claimed in the features of ornamentation not shown in broken lines in the accompanying representation (‘the SND’)
Date of Earliest Priority
10 June 2013 (‘the Relevant Date’)
Representation
(‘the Representation’)
In a request filed on 26 February 2014, the Owner sought examination of the Design. An adverse examination report issued on 13 June 2014. The report asserts that the Design is not new and distinctive on two bases. The first, which I call ‘the Subject Matter Objection’, draws on a news article which purports to be from 9 June 2013. It relates to the launch of an audio streaming service by the Owner, of which the examiner states:
[The news article] strongly indicates that all the visual features exhibited in your registered design are produced by computer software. It follows that there does not appear to be a design in relation to a “product” … [The Design] appears to be devoid of any thing that is manufactured…
The second, which I call ‘the Novelty Objection’, refers to an ‘office practice’ of examining as though the product to which Design relates is at rest. In the case of a display screen, being an electronic component, this entails considering the representations as though the component was not connected to a source of power. Accordingly, the representation would be imagined by the examiner as:
(‘the Blank Representation’)
The report cites a news article from 21 November 2010 against this plain looking quadrilateral. This article contains a number of images of clones of the ‘iPod 6 Nano’. Below is an image from this news article showing a device with an inactive screen.
(‘the Citation’)
In light of the manner of both objections, it is unsurprising that neither of the news articles cited in the report includes any image with visual features that bear any resemblance to the stylised radio in the Design’s sole representation.
The Owner responded to the first adverse examination report on 11 November 2014. As to the Subject Matter Objection, the response contests the publication date of the first news article. As to the Novelty Objection, the response suggests that it was impermissible for the examiner to refer to material outside of the application in order to conclude that most of the visual features of the Design are a result of computer software:
‘[The Owner] submits that the design should be examined on the basis of the representations as filed, and that the examiner should not be ignoring features of the representations based either on extraneous materials or assumptions as to on or off states.’
A second adverse examination report issued on 17 November 2014. The report withdrew reference to the first news article, but maintained both the Subject Matter Objection and the Novelty objection. This time, both were apparently based on the second news article.
The Owner asked to be heard on 15 December 2014. 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 Owner’s behalf.
At the beginning of the hearing I indicated that I was satisfied the Design at least nominally relates to a product of manufacture, and that consequently it was not necessary to her submissions on the Subject Matter Objection. My findings on this point are that the entry in the Register names the product to which the Design relates as ‘a display screen’ – I have no doubt this is a thing that is manufactured, meeting the definition of ‘product’.[1] Moreover, no matter whether the Representation is read as it appears or ‘at rest’ as in the Blank Representation, it is consistent with that product name. That is, even the scarce detail remaining in the Blank Representation consists of a quadrilateral depicted in broken lines. Although unlikely to be new and distinctive, the Blank Representation is still a depiction of the face of a display screen. I therefore withdrew the Subject Matter Objection, and the hearing proceeded on the Novelty Objection alone.
[1] Designs Act 2003 (Cth) s 6(1).
Evidence
The evidence filed in the lead up to the hearing consists of the following statutory declaration:
Anthony Caruana, Director of Gestalt Communications, editor of Macworld Australia, and freelance journalist, made on 30 October 2015 with Exhibits A to J (‘Caruana’)
Mr Caruana is presented as an expert witness, having been a freelance journalist and publication editor in the field of information technology for over 10 years. His evidence provides his views on the significance of graphical user interfaces (‘GUI’) to smartphones. Neither the Owner’s written submissions nor its submissions at the hearing referred to Caruana, nevertheless this declaration offers helpful insights into the understanding of a person familiar with smartphones and desktop computers from around 1995 up to the Relevant Date.
Mr Caruana relevantly declares:
The GUI and the visible hardware elements of smartphones are currently and were [at the Relevant Date] integral to each other … most smartphones use icons displayed on a GUI in order to provide a short-cut to launch an app or navigate to information.
As at 1995, GUIs on handheld devices were similar and smaller versions of what was available on desktop computers … The design of the GUI was not correlated to the handheld device.
In 1997, Palm released the Palm Pilot. The Palm Pilot was the first handheld device that I was aware of that had a graphical user interface with a design that correlated to the mobile device, itself rather than being a smaller version of a desktop operating system.
By 2013, manufacturers realised that mobile devices were used differently to desktop computers and therefore mobile devices had to have different GUIs. GUIs evolved to become less keyboard dependent, more finger friendly and the design of these GUIs became integrated with the design of the hardware they were applied to.
Mr Caruana’s choice of words is instructive. He speaks of GUIs ‘correlating to’ and being ‘integral to’ smartphones. That is, he does not conceive of the GUI as being the smartphone itself. As a further illustration of this, he equates the relationship between a mobile device and its GUI with that of a desktop computer and its operating system. His account of developments between 1995 and 2013 indicates that desktop operating systems were first adapted to mobile devices, and at the Relevant Date were being created specifically for these smaller devices. Mr Caruana’s reference to ‘icons displayed on a GUI’ indicates he sees icons that appear on a smartphone display screen as being produced by the operating system. That is, the icon is secondary software facilitated by the operating system, a further step from the hardware on which it appears.
The issues at examination
Once examination is complete, registration of the Design must be revoked if it is not a registrable design.[2] A design is registrable if it is both new and distinctive ‘when compared with the prior art base for the design as it existed before the priority date’.[3] A design is new if it is not identical to a design in the prior art base.[4] The prior art base includes designs published in a document anywhere.[5]
[2] Designs Act 2003 (Cth) s 65(2)(a)(b).
[3] Designs Act 2003 (Cth) s 15(1).
[4] Designs Act 2003 (Cth) s 16(1).
[5] Designs Act 2003 (Cth) s 15(2).
I am satisfied that the Citation was published in a document prior to the Relevant Date. Moreover, I find that the Design as construed in the Blank Representation is identical to the Citation. Therefore, if the Blank Representation is the appropriate construction of the Design at examination, it follows that the Design is not new and must be revoked. Indeed, this was the view taken during the initial examination of the Design.
During the prosecution of the initial examination, the Owner expressed some concern with the examiner’s recourse to extrinsic materials in asserting that visual features of the Design are likely produced by computer software. In my view, this was unnecessary because an ordinary reading of ‘display’ in the context it appears on the Register offers no potential meaning other than that which I afford it throughout these reasons: ‘an electronic system capable of representing information visibly, as on a screen.’[6] Moreover, during the prosecution of this examination the Owner has not suggested an alternative way the product name ‘display screen’, nominated by the Owner, might be interpreted.
[6] Susan Butler (ed), Macquarie Dictionary (Macquarie Dictionary Publishers, 6th ed, 2013) 429 (emphasis added).
The Owner submits that the approach taken in examination to date in relation to the Novelty Objection is incorrect. These submissions proceed along two lines.
The first approach asserts that images appearing a display screen (called ‘screen displays’ by the Owner) might not have been considered a visual feature of the product on which it appears in the early to mid 1990s, but at least by the Relevant Date would have come to be viewed as such (‘the Temporal Submission’).
Another strand to this submission amounts to a more ambitious claim – that screen displays are products in their own right. I do not need to deal fully with this in these reasons, since the product to which the design relates does not claim to be a ‘screen display’ or the like but a ‘display screen’. I would only say here that, an ordinary reading of the term ‘screen display’ seems to relate only to images, much the same as would be the case for ‘a projected image’. While both refer in a way to a means through which those images will manifest (a screen and a projector respectively), but neither squarely relate to a product of manufacture. Both of those terms make a claim to visual features in relation to any number of different products. Since designs under the Act must be in relation to a product,[7] a ‘screen display’ would not be registrable for want of appropriate subject matter.
[7] Designs Act 2003 (Cth) s 8.
The Owner’s second approach is to say that the office practice of considering a display screen as though it were at rest is an impermissible interpretation of the statute (‘the Interpretation Submission’).
Discussion
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.
8 References in this Act to a design
In this Act, a reference to a design is a reference to a design in relation to a product.
The Temporal Submission
On 31 August 1995, the 74th report of the Australian Law Reform Commission was tabled in the Australian Parliament.[8] The relevant discussion from the ALRC Report is reproduced below (footnotes omitted, underline added).
[8] Australian Law Reform Commission, Designs, Report No 74 (1995) (‘the ALRC Report’).
Screen displays and computer programs
4.30 Protecting the 'look and feel' of computer programs. It has been sought to protect the 'look and feel' of a computer program by registering the screen display as a design. The Registrar took the view that a registrable design should be capable of distinguishing the design from the fundamental form of the article. The Registrar said that
In the present case when the applicant's designs are displayed on a computer screen I doubt that the viewer would see the computer screen or any other hardware associated with the computer as being characterised by those designs, since he or she knows that the screen image is transitory and that the hardware is still the same hardware as it was before the design was displayed on the screen. Because the designs are transitory they do not give a 'particularly individual and specific appearance' to the computer screen. I think that the viewer would see the designs as characterising the software rather than the hardware. Thus whilst there may be some argument that the applicant's designs are generally 'applicable' to a computer screen, I think that they are not applicable within the meaning of the Designs Act.
The Registrar also held that the computer screen information was not a pattern or ornamentation. It was further held that as the design features were subordinate to the content and layout of the literary and textual material they cannot form a registrable design. A UK case has taken the view that the display for a digital watch was registrable even though the alarm symbol was only displayed in certain circumstances.
4.31 Distinguishing the screen display and the program. A majority of the [Copyright Law Review Committee ‘CLRC’] took the view that an icon or even a complete screen display could not adequately distinguish the computer screen as it was not always displayed on the screen. But it did adequately distinguish a computer program as the program can be written to ensure that the icon is always on the screen when the program is in use. The CLRC considered that the program was a product within the definition recommended by the Commission. However it questioned whether the screen display could be regarded as the appearance of the computer program on the basis that if
a computer program has any appearance it would seem to be the source code and that is already protected by copyright.
The Committee did not consider design protection as an appropriate way to protect screen displays. It did not recommend any additional form of protection for screen displays.
4.32 Screen display is not a product. In the Commission's view a screen display is a use of a product - the monitor or other computer hardware - it is not itself a product. Nor is it the visual appearance of any product. The visual appearance of the monitor or other computer hardware is the product at rest not in use. The fact that the screen display is generated by a computer program does not make it the visual appearance of that program any more than a printed page is the visual appearance of the printer. It follows that a screen display does not qualify for protection as a design either as the design of a computer program or on any other ground. In the Commission's view this is appropriate and no special provision needs to be made for screen displays either confirming or qualifying this.
Recommendation 20
Screen displays should not be able to be protected as designs. It is not necessary to include any special provision in the new designs legislation to confirm this.
The Australian Government responded to recommendation 20 of the ALRC Report with an unqualified acceptance. The quote that appears in paragraph 4.30 of the ALRC Report above is from a 1991 Designs Office decision made under the Designs Act 1906 (Cth).[9] The reasoning in the 1991 decision and in the ALRC Report reflects the thinking on this subject at least at their respective times.
[9] Re Applications by Comshare Incorporated (1991) 23 IPR 145 (‘Comshare’).
The Owner’s submissions seek to revisit the ALRC Report’s analogy to the output of a printer, observing that a printed page and a printer ‘are clearly separate products’ and that this ‘reveals an absence of understanding of the true nature of a screen display’. I consider this an unfair criticism, since at the time of the ALRC Report, the state of the law was such that a printed page would not be considered an ‘article of manufacture’[10] (the equivalent of ‘product’ now in the Act), but a printer would. Therefore in 1995 they were not ‘clearly separate [articles of manufacture]’ – one clearly was an article of manufacture, and the other clearly was not.
[10] Re Littlewoods Pools Ltd's Application (1949) 66 RPC 309.
The Owner submits that, notwithstanding the findings of the Delegate of the Registrar of Designs in 1991 and the Australian Law Reform Commission in 1995, changes in technology over time has led to images that appear on display screens becoming visual features of those screens by the Relevant Date. It contends that today ‘the images presented on [a] display are critically important visual features.’ The central illustration it offers in support of this assertion is the move away from smaller display screens which relied on keyboards and other hardware to interact with the images which appear on them, toward larger screens that are themselves the basis for user interaction. This shift has plainly happened and continues to happen, but I do not see how the general move from terminals to touch screens challenges the hardware/software divide identified by the delegate in Comshare. Mr Caruana’s evidence serves only to reinforce my own understanding of this. The images that appear on a display screen are not visual features of the display screen. They are manifestations of software (or in Mr Caruana’s terms, operating systems or GUIs) in combination with hardware and streams of electrons.
At the hearing the Owner’s representatives pointed to recent marketing trends in smartphones and similar devices, that they are now typically marketed in their ‘on state’ in order for the viewer to distinguish between operating systems and perhaps manufacturers. This serves to reinforce my finding above – the viewer uses this marketing practice to make complex assessments as to operating systems and trade sources of those devices, not to distinguish between the visual features of the display screens that are incorporated within them.
Another example offered by the Owner relates to a proliferation of ‘standby mode’ in a number of common electronic devices incorporating display screens, which it submits blurs the distinction between what is an active state and what is not. The concrete examples given were in relation to a smartphone or similar device. It was put to me that the display screen will commonly show certain images when on and unlocked, others when on and locked, and others still even when the device is switched off and charging. However to my understanding of it, even the last of these examples, despite being nominally ‘switched off’ the device is not actually at rest, but is necessarily connected to a source of power. All of these examples concern a smartphone or similar device, not only its ‘display screen’ component which is (at least nominally) the product to which the Design relates.
The Owner also raised the recent proliferation of 3D printing. The argument here is that the images on a display screen appear in much the same way as the products of a 3D printer, that is, a combination of software, hardware and power are required for its output. However, it seems to me that there is an important distinction missed in that analogy. The output from a 3D printer requires a fourth input, printing material. The material is shaped by the 3D printer, and the result persists after the printer has printed out the product. The result is in itself ‘a product’ – a thing that is manufactured, and so its visual features are eligible for design protection, separate to the printer from which it emanated.
A great deal of the Temporal Submission is concerned with appeals for the Act to be interpreted to keep up with technological change, drawing an analogy with the broad reading that continues to be afforded to the ‘manner of manufacture’ test in patents law, despite having been formulated several centuries ago.[11] In this regard, the Owner has referred to two papers produced by the Advisory Council on Intellectual Property (‘ACIP’) in its recent review of the Designs System. In the earlier paper, ACIP stated that it ‘is inclined to think that some protection should be available for at least some virtual or non-physical designs, given the increasing focus on design efforts on software elements of products’, before acknowledging that some change to the legislation might be needed to bring this into effect.[12] At the hearing, the Owner’s representatives noted that ACIP’s language had later hardened, stating that ‘[there] is nothing in the legislation which requires that visual features be observable in the “resting” state or when unconnected to a power source. IP Australia should reconsider, and abandon, this aspect of its practice in assessing the validity of designs.’[13] While it is certainly true that the Act does not contain a specific provision that directs the assessment the visual features of a product in its resting state, after careful consideration, I am left disagreeing with this assertion from the ACIP Final Report. My reasons for this finding are set out in my discussion of the Interpretation Submission below.
[11] See, eg, National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252.
[12] Advisory Council on Intellectual Property, Review of the Designs System, Options Paper (2014) 50.
[13] Advisory Council on Intellectual Property, Review of the Designs System, Final Paper (2015) 31 (‘the ACIP Final Report’).
Despite the emphatic wording earlier in the document, the ACIP Final Report ultimately did not recommend an abandonment of this practice. Rather, it recommended ‘that the treatment of virtual or non‐physical designs be reconsidered, for example by allowing consideration of the product in its active, and not just its resting state when considering validity.’[14] The Government’s response was:
The Government accepts this recommendation.
Through its international engagement activities, IP Australia will continue to assess whether specific considerations for the treatment of virtual or non-physical designs would benefit Australian interests.
This issue is also being considered by the [Productivity Commission] in its inquiry into [intellectual property] arrangements.[15]
[14] Ibid 33.
[15] Government Response – ACIP Designs Review (2016) 6.
That is, the Government agreed to reconsider the treatment of this subject matter without committing to change. Nor did the subsequent Productivity Commission Report recommend a change to practice or law, instead encouraging the Australian Government ‘to further build the evidence base on whether specific considerations for the treatment of virtual or non-physical designs would be beneficial and, if so, how this should be done.’[16]
[16] Productivity Commission, Intellectual Property Arrangements, Inquiry Report (2016) 369.
The Interpretation Submission
The Owner submits that the practice of viewing representations of products ‘at rest’ unlawfully adds a gloss on s 7 of the Act by adding to that provision a requirement ‘that a visual feature must be a visual feature in an “at rest” state’. This assessment is informed by a discussion in the Designs Examiners’ Manual of Practice and Procedure which refers to the ALRC Report and several earlier decisions, including Comshare.[17] The Owner contends that recourse to the ALRC Report for its comments that products be assessed ‘at rest’ is impermissible under the rules pertaining to the consideration of extrinsic material in the interpretation of Commonwealth statute,[18] the relevant parts of which are reproduced below:
[17] Designs Examiners’ Manual of Practice and Procedure D04.4.3.1
[18] Acts Interpretation Act 1901 (Cth) s 15AB (‘the AIA’).
15AB Use of extrinsic material in the interpretation of an Act
(1)Subject to subsection (3), in the interpretation of a provision of an Act, if any material not forming part of the Act is capable of assisting in the ascertainment of the meaning of the provision, consideration may be given to that material:
(a) to confirm that the meaning of the provision is the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act; or
(b) to determine the meaning of the provision when:
(i) the provision is ambiguous or obscure; or
(ii) the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act leads to a result that is manifestly absurd or is unreasonable.
(2)Without limiting the generality of subsection (1), the material that may be considered in accordance with that subsection in the interpretation of a provision of an Act includes:
…
(b) any relevant report of a Royal Commission, Law Reform Commission, committee of inquiry or other similar body that was laid before either House of the Parliament before the time when the provision was enacted;
…
(3)In determining whether consideration should be given to any material in accordance with subsection (1), or in considering the weight to be given to any such material, regard shall be had, in addition to any other relevant matters, to:
(a) the desirability of persons being able to rely on the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act; and
(b) the need to avoid prolonging legal or other proceedings without compensating advantage.
The Owner submits that s 15AB(1)(b) of the AIA is not triggered because s 7 of the Act is neither ambiguous, obscure, nor would its ordinary meaning lead to a result that is manifestly absurd or unreasonable. Before that provision can be considered it is necessary to confirm its ordinary meaning. Under s 15AB(1)(a) of the AIA, recourse to extrinsic materials is permissible for that purpose.
Section 7 of the Act defines ‘visual feature’ as including ‘the shape, configuration, pattern or ornamentation of the product’ (emphasis added. The definition of ‘design’ in s 5 of the Act effectively mirrors this, limiting a design to ‘one or more visual features of the product’ (emphasis added). ‘Of’ is therefore the word that consistently serves to link ‘visual features’ with ‘product’. The Macquarie Dictionary provides the following definitions of the word ‘of’:
Of
preposition a particle indicating:
1. distance or direction from, separation, deprivation, riddance, etc.: within a metre of; to cure of.
2. derivation, origin, or source: of good family; the plays of Shakespeare.
3. cause, occasion, or reason: to die of hunger.
4. material, substance, or contents: a packet of sugar; a suit of mohair.
5. a relation of identity: the city of Sydney.
6. connection or association: the queen of England.
7. belonging or possession, connection, or association: the queen of England; the property of all.
8. inclusion in a number, class, or whole: one of us.
9. objective relation: the ringing of bells.
10. reference or respect: talk of peace; what of Marie-Louise?
11. subject or theme: the history of English.
12. qualities or attributes: a man of tact.
13. time: of an evening.
14. US to or before (a designated hour of the clock): twenty minutes of five is 4.40.
15. the attribution of a quality to: it was good of you to come.
16. the attribution of a quality with respect to: fleet of foot.
17. Chiefly Archaic or Poetic the agent given after a passive verb, that is, by whom something is done: beloved of all; cursed of God; admired of his fellows.[19]
[19] Butler, above n 6, 1020.
An ordinary reading of these provisions in their context lends themselves to one of the more concrete, relational definitions of the word ‘of’ above. On my reading of the Act ‘shape’ ‘configuration’ ‘pattern’ and ‘ornamentation’ fall naturally within the sense of the term as ‘qualities or attributes’. Such a reading I believe is further supported in the definition of ‘visual feature’ in s 7 of the Act as being ‘in relation to a product’, the definition of ‘design’ in s 5 of the Act being ‘in relation to a product’ and s 8 of the Act being entirely occupied by the need for anywhere in the Act the word ‘design’ to be interpreted as ‘a design in relation to a product’. As I have already indicated above, I have been unconvinced that an image that appears on a display screen would normally be considered a quality or attribute of a display screen per se.
Given this finding, it is not necessary to go beyond the dictionary definition to confirm the ordinary meaning of these provisions, but as already mentioned, it is quite permissible to do so.[20] As such, as detailed above, the ALRC Report provides further support for this ordinary construction. Were my understanding of the ordinary meaning of the word ‘of’ in these contexts incorrect, then the fact that several other definitions listed above could potentially fill the space left by ‘qualities or attributes’ provides the ambiguity necessary to trigger s 15AB(1)(b)(i) of the AIA, and through it a determination of its meaning that is in line with the ALRC Report’s Recommendation 20 and the Australian Government’s response.
[20] Acts Interpretation Act 1901 (Cth) s 15AB(1)(a).
Decision
The Temporal Submission and the Interpretation Submission have failed to convince me to depart from my initial findings on the examination. Since the Citation is identical to the Blank Representation, the Design was not new at the Relevant Date, and must be revoked.
Design number 201316431 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.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
14 June 2017
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