Apple Inc - [2017] ADO 6

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…

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 6
Case: [2017] ADO 6
Decision Date: 14 June 2017

CaseChat Overview and Summary

Apple Inc challenged the decision of a delegate of the Registrar of Designs to revoke its registration of a design relating to a display screen. The delegate concluded that the design was not new and distinctive, and so revoked the registration. The delegate had found that the design was identical to a prior publication. Apple Inc argued that the delegate had erred in considering the design as though the display screen was at rest, without reference to images that appear when the device is powered on. Apple Inc also argued that the practice of viewing a product ‘at rest’ added an impermissible gloss on the relevant statutory provisions.

The court found that the delegate had not erred in considering the design as though the display screen was at rest, nor in relying on the Australian Law Reform Commission's recommendation against protecting screen displays as designs. The statutory provisions defining ‘visual feature’ and ‘design’ were not ambiguous or obscure, and so recourse to extrinsic material was not necessary. The practice of viewing a product ‘at rest’ was consistent with the ordinary meaning of the statutory provisions. Apple Inc's submissions were not sufficient to persuade the court that the delegate's construction of the statutory provisions was incorrect. The design was not new, and so the registration was revoked.

The final orders are that design number 201316431 will be revoked one month from the date of the decision. If the Registrar of Designs has been served with a notice of appeal from this decision before that time, 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.

Orders