Apple Inc
[2017] ADO 5
•31 May 2017
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination by Apple Inc of design numbers 201410912, 201410928 and 201410930 (registration numbers 354419, 354401 and 354416) in the name of Apple Inc.
| Delegate: | Adrian Richards |
| Representation: | Carl Harrap and John Dower of FPA Patent Attorneys Pty Ltd |
| Decision: | 2017 ADO 5 Examination of three designs under section 63 of the Designs Act 2003 (Cth) – section 19 considered – designs new and distinctive over the prior art base – examination certificates to issue |
Background
On 28 February 2014, Apple Inc (‘the Owner’) filed three applications for registration of designs (together, ‘the Designs’) under the Designs Act 2003 (Cth) (‘the Act’). The Designs were entered on the Register of Designs (‘the Register’) in late March 2014, each with a priority date of 9 September 2013 (‘the Relevant Date’).
The Owner requested examination of the Designs at the time they were filed. The Act does not contemplate the examination of unregistered designs, so an acknowledgment of those examination requests was sent to the Owner at that time. After the Designs were registered, examination of all three commenced at the same time.
Identical first adverse examination reports were sent in relation to the Designs on 30 June 2014. The reports referred to and annexed four publications. Those are Australian design number 201215988 (registration number 346128), United States of America Design Patent number D684571 and two videos appearing on the ‘YouTube’ website (together, ‘the Citations’).
The Owner responded to the first examination reports against design numbers 201410912 and 201410928 on 30 October 2014. Second adverse examination reports were then issued for those two designs on 23 November 2014. The Owner responded to those second reports, and the first report against design number 201410930 on 19 December 2014. These responses included a request to be heard in the event they were not considered by the examiner sufficient to issue certificates of examination. A further set of three adverse examination reports then issued in relation to all of the Designs. The hearing was set down for 10 November 2015 in Canberra, which I conducted as a delegate of the Registrar of Designs.
Details of the Designs and the Citations
The Designs as they appear on the Register share several particulars. For each, the product has been identified simply as ‘electronic device’. The Owner’s name, the filing and the priority dates are also the same for each of the Designs. I have set out the most informative representations of each of the Designs below. The representations of the Designs are all accompanied with a relatively uncommon feature for the Register, explanatory text. This explanatory text needs to be read in context of the representations and the Statement of Newness and Distinctiveness (‘the SND’). I have placed below both of these texts together with a selection of the representations to which they refer.
201410912
Explanatory text: The dot-dash lines in the Figures represent a location of a boundary of the relevant shaded area, such boundary not being a feature of configuration and ornamentation referred to in the statement of newness and distinctiveness and not a visual feature of the design
SND:Newness and distinctiveness resides in the features of ornamentation of the shaded areas shown in the representations
201410928
Explanatory text: The dot-dash lines in the Figures show boundaries of the area referred to in the accompanying statement of newness and distinctiveness and form no part of the design.
The Figures are illustrated to show contrasting appearance, including colour. The area within the innermost concentric geometric shape and portions of the front surface of the electronic device are one appearance, and the area between the two innermost concentric geometric shapes and the area adjacent to the front surface of the electronic device is a second appearance.
The dashed lines show features of shape, within which features of colour, pattern and/or ornamentation may be included.
SND:Newness and distinctiveness resides in the features of ornamentation, including contrasting appearance, of the shaded areas within the dot-dash lines in the accompanying representations.
201410930
Explanatory text: The dot-dash lines in the Figures show boundaries of the area referred to in the accompanying statement of newness and distinctiveness and form no part of the design.
The Figures are illustrated to show contrasting appearance, including colour. The area within the innermost concentric geometric shape and portions of the front surface of the electronic device are one appearance, and the area between the two innermost concentric geometric shapes and the area adjacent to the front surface of the electronic device is a second appearance.
The dashed lines show features of shape, within which features of colour, pattern and/or ornamentation may be included.
SND:Newness and distinctiveness resides in the features of ornamentation, including contrasting appearance, of the shaded areas within the dot-dash lines in the accompanying representations.
All of the Designs share the same shape and configuration. The Owner’s assertions of newness and distinctiveness in the respective SNDs have been confined in two respects: the visual features in focus are limited to very specific areas and within them to the ‘ornamentation’ shown.
Design numbers 201410928 and 201410930 share the same areas of tonal variance within these specific areas, though their areas of light and dark are opposite. I have set out below a close up view of this area for both of those designs:
Turning to the Citations, as a preliminary point I am satisfied that all were published in a document before the Relevant Date. I note this point has not been contested.
The Citations fall into two categories. The first is the ‘YouTube’ videos. Both claim to show an (at the time unreleased) ‘iPhone 5S’ in contrast to an earlier model, the ‘iPhone 5’.
(‘the Playinfinite Citation’ sits at the bottom of the three units that appear in the photo above)
Atop the stack pictured above is an example of the Owner’s ‘iPhone 5’, below that is what is described by the presenter as a ‘dummy unit’ of the Owner’s ‘iPhone 5C’, and at the bottom is a second ‘dummy unit’ which is claimed to be a leak of the ‘iPhone 5S’. I understand from the ‘YouTube’ presentation that a dummy unit bears an external resemblance to a mobile smartphone but does not contain any working parts, as is most obvious in the false screws and unusual looking audio ports visible in the above image.
11. The adverse examination reports do not make clear which of these three units the examiner believed to anticipate any of the Designs. The middle unit is quite distinct from the other two and from the Designs, and so I will not consider it further. Since it is merely an example of the Owner’s ‘iPhone 5’, the top unit falls into the second category of citations (discussed below). This leaves the bottom unit for consideration.
Throughout the presentation only still images are shown. In all images the edge detail is only visible from the side, and the home button of the Playinfinite Citation is not shown.
(‘the uSwitch Tech Citation’)
The video of the uSwitch Tech Citation consists of a series of moving images, with sweeping camera shots and a lot of turning of the product. As such it has been hard to capture a screenshot that adequately shows the design therein. The face of the device is visible, notably absent below the screen is a home button, indicating that this is likely another mock-up or dummy unit. Aside from that absence, the narrator of the video notes a few small differences at the rear, particularly in relation to the apertures for the main camera, before finally remarking that ‘not much has changed’ from the ‘iPhone 5’.
The second category consists of the Owner’s previous designs registered in Australia and the United States of America. Examples from these documents are set out below:
(‘the AU Citation’)
(‘the US Citation’)
Despite some minor differences in their execution, these two drawings appear to show the same design. The ‘YouTube’ videos make it plain to me that both of the above line drawings depict the Owner’s ‘iPhone 5’.
To sum up, the uSwitch Tech Citation appears to be an ‘iPhone 5’ but without any home button. The Playinfinite Citation itself is largely obscured, and may simply be another rendering of the uSwitch Tech Citation. Therefore there is really only one design in the prior art which has been raised at examination: the Owner’s ‘iPhone 5’. The examples in the ‘YouTube’ videos are slightly different but in ways that are largely immaterial to the present matters. However, since they are in colour, they do provide useful context for assessing the Owner’s relatively narrow claims of newness and distinctiveness in relation to the Designs.
Legislative Framework
In deciding on the examination of the Designs, I must consider whether the registration of each design should be revoked, either because it is not a registrable design as defined by the Act or due to another ground prescribed in the Designs Regulations 2004 (Cth) (‘the Regulations’).[1] However, the grounds prescribed in the Regulations are not relevant to these examinations.
[1] Designs Act 2003 (Cth) ss 65(1), 65(2)(a).
Under the Act, ‘Design’ means the overall appearance of a product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation).[2]
[2] Designs Act 2003 (Cth) ss 5, 7(1).
A design is a registrable design if it is both new and distinctive ‘when compared with the prior art base for the design as it existed before the priority date of the design’.[3] Relevant to the present examinations, the prior art base includes other designs published in a document anywhere, before the Relevant Date.[4]
[3] Designs Act 2003 (Cth) s 15(1).
[4] Designs Act 2003 (Cth) s 15(2).
Section 16(1) of the Act provides that ‘a design is new unless it is identical to a design that forms part of the prior art base for the design’. Given that there is at least some difference between the Designs and each of the Citations, relevant for present purposes is s 16(2) of the Act, which states:
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.
Section 19 of the Act sets out the factors to be considered when assessing substantial similarity in overall impression. Overall, more weight is to be given to similarities between the Designs and the Citations than to differences between them.[5] In making the assessment I must also consider holistically:
the state of development of the prior art base for each of the Designs[6]
if only part of one of the Designs is substantially similar to a Citation, have regard to the amount, quality and importance of that part in the context of the design as a whole,[7] and
the freedom of the creators of the Designs to innovate[8]
pay particular regard to any visual features identified in each of the Designs’ SNDs, in the context of each Design as a whole[9]
[5] Designs Act 2003 (Cth) s 19(1).
[6] Designs Act 2003 (Cth) s 19(2)(a).
[7] Designs Act 2003 (Cth) s 19(2)(c).
[8] Designs Act 2003 (Cth) s 19(2)(d).
[9] Designs Act 2003 (Cth) s 19(2)(b).
Section 19(4) provides that in assessing the above factors, I must apply the standard of the informed user. The standard is ‘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’.[10]
[10] Designs Act 2003 (Cth) s 19(4).
Evidence
The evidence filed in the lead up to the hearing consists of the following statutory declarations:
Joe Mok, Senior Associate at Freehills Patent Attorneys, made on 23 October 2015 with no exhibits (‘Mok’)
Elyse Schinella, Patent Scientist at Freehills Patent Attorneys, made on 4 November 2015 with Annexure A (‘Schinella’)
Anthony Caruana, Director of Gestalt Communications, editor of Macworld Australia, and freelance jounalist, made on 30 October 2015 with Exhibits A to J (‘Caruana’)
Ben Griffith, founder and CTO of Reidefine Media, made on 5 November 2015 with Annexures A to G (‘Griffith’)
These four declarations are the same as were filed in relation to a decision I issued earlier this year.[11] In that decision I made the following observations as to that evidence, which are equally applicable here:
Messrs Caruana and Griffith are presented as expert witnesses. A journalist for over 10 years, Mr Caruana has written a number of articles about consumer technologies, including smartphones. Mr Griffith’s company provides consultancy services relating to the delivery of content and interfaces via mobile devices. Both of these declarants have for many years kept up with smartphones and related technologies for their work. Their evidence also indicates that they have personally owned and used a variety of smartphones from several different sources, including from the Owner.
Mok and Schinella both offer evidence relating to the prior art base. Mok provides detail of searches conducted via ‘Google Images’, and Schinella offers detail of searches conducted on design patents in the United States of America. The results of all of these searches are annexed to Caruana.[12]
Discussion
[11] Apple Inc [2017] ADO 2.
[12] Ibid [14]-[15].
Standard of the informed user
The factors under s 19 of the Act must be considered from the perspective of a person familiar with modern day touchscreen smartphones, or similar products. As was also the case in my earlier decision:
Mr Caruana declares that touchscreen smartphones became widespread from around 2007 onward. With the Relevant Date some six years after this, noting the popularity of smartphones with Australian consumers at that time, I infer that the number of people that would be familiar with the touchscreen smartphones (or similar products) would be immense. In that regard, the testimony of Messrs Griffith and Caruana is helpful for at least gauging how certain groups within that class of persons go about identifying the importance of certain visual features.[13]
[13] Ibid [18].
Prior art base and freedom of the creator to innovate
Since the product is the same and the Relevant Date very near that to that in my earlier decision, my findings in relation to ss 19(2)(a) and 19(2)(d) of the Act are the same in the present matter. I have reproduced those findings below:
Prior art base
The proliferation of touchscreen smartphones and similar products between 2007 and the Relevant Date is demonstrated in the search results of Mr Mok and Ms Schinella. The state of the prior art base at the Relevant Date was therefore very well developed. It follows that the person familiar with touchscreen smartphones would be more likely to be aware of smaller differences. In particular, the evidence of Messrs Griffith and Caruana show that they are accustomed to picking differences in touchscreen smartphones by looking at the:
· Arrangement and shape of ports
· Extent of screen coverage
· Body shape, in particular at the edges
· Detailing and finish
There is a suggestion in the Owner’s submissions that, since Mr Griffith was able to identify the Designs as having the appearance of an ‘Apple or Apple-type phone’, a prior art base consisting of the Owner’s designs, or only visually similar designs to the Owner’s, should be considered. I reject this line of argument. By definition the prior art base relates to the product, not to the design. An ‘Apple or Apple-type’ touchscreen smartphone cannot be considered a different ‘thing’ to any other manufacturer’s touchscreen smartphone.
Freedom of the creator of the design to innovate
The Owner submits that the following features are inherent to touchscreen smartphones (as identified by Mr Griffith):
· One-piece construction
· Large screen covering approximately 80% of the front of the device
· Non-mechanical (i.e. no mechanism by which it flips or slides open)
· Small number of buttons
The Owner also submits that certain features are expected by the consumer, such as the presence of certain ports or other apertures (for example, those for speakers and the microphone) and certain buttons.
I am unsure why the Owner draws a distinction between these features as market expectations and inherent qualities. If, as it seems to me, an aperture for a speaker is required for the transmission of sound waves through the air then that would both be expected by the consumer and an inherent feature. The same can be said for most of the features set out above.
Nevertheless, I accept this evidence. Since they are inherent to the product itself, an expectation of the market, or both, these features effectively served to constrain the creator of the Designs. Wherever these features are visible, they shall be given a lesser weighting in the comparison between the Designs and the Citations. For certain features it is their presence alone, rather than their precise shape and/or configuration, that is to be read down. For example, while volume control buttons can be placed anywhere that is readily accessible to the user, a microphone must always be a distance from the earpiece, at the opposite end of the device.[14]
[14] Ibid [19]-[24].
Amount, quality and importance of the similarities
For the purpose of a side-by-side comparison I have set out the perspective view of the AU Citation together with the equivalent view of each of the Designs:
As far as the three dimensional features of shape and configuration are concerned, the similarities are striking. The shape of the home button is the sole difference – the AU Citation, US Citation and images of the ‘iPhone 5’ all having a concave button, and the Designs all having a flat button with a bevelled edge. That is, many of the features that were identified by Messrs Griffith and Caruana as permitting the informed user to distinguish between designs are entirely anticipated by the AU Citation. This includes: the arrangement and shape of the ports, the extent of the screen coverage and the body shape, including at the edges.
That said the Designs seek to emphasise ornamentation, not three dimensional features. The ornamentation of the Designs are difficult to consider separately from the three dimensional features. This is because the ornamentation is bounded by elements of shape and configuration. For example, the gold of design 201410912 follows a selection of bevelled edges. If an item of prior art showed the same gold ornamentation, but executed on a rounded edge, would it anticipate that design?
With this slight difficulty noted I now turn to consider any apparent similarity in ornamentation. On this, the line drawings of the US Citations and the AU Citation and have little to say. However, the examples of the ‘iPhone 5’ and supposed leaks of the ‘iPhone 5S’ visible in the Playinfinite Citation and the uSwitch Tech Citation provide some information of the ornamentation of the edges of the Citations in the prior art.
Both the ‘iPhone 5’ and the Playinfinite Citation, respectively at the top and bottom of the photo above, show a slight tonal variation between their bevelled edge and the face. However, this variation seems more due to shadow than design – these areas appear to be silver and silver. This can be contrasted with the more pronounced tonal variance in chrome/white transition depicted in the uSwitch Tech Citation below.
Were it not for the missing home button, this combination of chrome bevelled edge and white face would strongly resemble the focal area of design number 201410928 (pictured again below).
The similarity in tonal contrast between design number 201410928 and the uSwitch Tech Citation is significantly diminished by the lack of any home button on the latter. For this reason, the uSwitch Tech Citation cannot serve to anticipate any of the Designs. Further, it is impermissible to ‘mosaic’ together the tonal variance of the uSwitch Tech Citation with another example from the prior art base.
Regarding the coloured surfaces in design 201410912, I note briefly here that none of the Citations nor any of the prior art on file and in evidence anticipate this ornamentation.
Similarity in overall impression – concluding remarks
It is not controversial to observe that the differences between the Citations and the Designs are few and the similarities many. This is not necessarily fatal to the registration of the designs. Given the state of the prior art base, informed users are likely to be accustomed to identifying designs by looking at smaller differences. This is supported in the testimony of Messrs Griffith and Caruana. On this point, the Designs do diverge from the Citations in two respects, both of which were noted by these two declarants as means for distinguishing between designs in this crowded field. Those two features are what has been called the finish (such as chrome detailing) and the shape of the buttons.
The significance of the gold finish of design number 201410912 is enhanced not only by the SND but also by the observations of Messrs Caruana and Griffith. Mr Caruana declares that the ‘particular arrangement of sandy coloured detailing’ is to him ‘conspicuous’. Mr Griffith similarly declares that ‘the golden colouring on the back side of the smartphone and the coloured bevelled rim of the “Home” button are particularly noticeable’. The latter also volunteers that he was not aware of any smartphones in the marketplace adopting gold colouring before those of the Owner, and that this ‘may have been’ after the Relevant Date.
Most of Mr Griffith and Mr Caruana’s discussion in relation to the ornamentation design numbers 201410928 and 201410930 is descriptive. They both focus on the novel shape of the home button and how the angle and depth of that button’s bevelling is the same as the edge of those phones. Both of these declarants do however note the visual effect of the tonal contrast. Mr Caruana simply declares that the tonal contrast emphasises the bevelled edges, once again demonstrating the close relationship between the shape and the ornamentation of these two designs. Mr Griffith takes things a few steps further, declaring that the contrast ‘significantly contributes to the overall impression of the product’, ‘makes the “Home” button distinctive, and makes the product aesthetically appealing’.
As far as shape is concerned, only the home button differs between the Designs and the ‘iPhone 5S’. Mr Griffith went so far as to refer to this (together with the Owner’s very specific claims to ornamentation) as signalling a change ‘between generations of smartphones’. While this difference is present in the Designs it is significant that the SND seeks to draw attention to ornamentation. By implication this should draw attention away from shape, although the shape and the ornamentation of the Designs are difficult to delineate.
Despite the shape being largely shared between each of the Designs and the Owner’s previous model, the ‘iPhone 5’, I find that each of the Designs is distinctive over the prior art base. The facts of the crowded prior art base, constraints on the creator of the Designs to innovate and the narrow SNDs for each Design converge to offer the informed user a distinct visual impression. To paraphrase the words of Mr Griffith, to those familiar with this product the impressions of the differences between the Designs and the ‘iPhone 5’ are generational in their nature.
Decisions
I have found that no grounds for revocation have been made out for design numbers 201410912, 201410928 and 201410930. As a result, examination of these three designs has been completed, and certificates of examination shall now issue for each.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
31 May 2017
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