Apple Inc
[2017] ADO 4
•16 May 2017
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination of design number 201311215 (registered design number 349501) in the name of Apple Inc.
Delegate: | Adrian Richards |
Representation: | Carl Harrap and John Dower of FPA Patent Attorneys Pty Ltd |
Decision: | 2017 ADO 4 Examination of a design under section 63 of the Designs Act 2003 (Cth) – section 19 considered – design new and distinctive over the prior art base – examination certificate to issue |
Background
On 8 March 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 27 June 2013 with the following particulars:
Product name
Input mechanism for an earphone
Statement of Newness and Distinctiveness
Newness and distinctiveness resides in the feature of shape and configuration shown in solid lines in the accompanying representations (‘the SND’)
Date of Earliest Priority
8 September 2012 (‘the Relevant Date’)
Representations
The Owner requested examination of the Design on 25 July 2013. The examiner raised several examples of prior art, all of which relate to the same design. The earliest example of this is United States of America design patent number D597071 (the Earlier Design), details of which I have set out below:
Product name
Input mechanism
Publication date
28 July 2009
Selected images
Following an exchange of adverse examination reports and responses thereto, the Owner asked to be heard on 24 November 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.
Legislative framework
Substantive examination of a registered design requires a single question to be answered: should registration of this design be revoked? Relevant to the present examination, grounds for revocation will exist where the subject design is not a ‘registrable design’.[1]
[1] Designs Act 2003 (Cth) s 65(2)(a)(b).
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’.[2] The prior art base includes designs published in a document anywhere.[3] Since the Earlier Design is not identical to the Design, there is no question that the latter is ‘new’ within the meaning of s 16(1) of the Act. The relevant enquiry under the Act, therefore, is whether the Design is ‘distinctive’.
[2] Designs Act 2003 (Cth) s 15(1).
[3] Designs Act 2003 (Cth) s 15(2).
Section 16(2) of the Act states that a design ‘is ‘distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base’. Section 19 of the Act goes into more detail, by setting out the factors to be considered when assessing substantial similarity in overall impression. More weight is to be given to similarities between the Design and the prior art than to differences between them.[4] I must also:
have regard to the state of development of the prior art base for the Design[5]
where only part of the Design is substantially similar to an example of prior art, have regard to the amount, quality and importance of that part in the context of the design as a whole,[6] and
have regard to the freedom of the creators of the Design to innovate[7]
[4] Designs Act 2003 (Cth) s 19(1).
[5] Designs Act 2003 (Cth) s 19(2)(a).
[6] Designs Act 2003 (Cth) s 19(2)(c).
[7] Designs Act 2003 (Cth) s 19(2)(d).
Since there is an SND I am required to have particular regard to the features identified in the statement.[8] However, since the SND refers only to the features shown in solid lines, and every line drawing is completely formed of solid lines, the statement effectively does not identify any features. That is, I would read these drawings in the same way whether or not there was an SND.
[8] Designs Act 2003 (Cth) s 19(2)(b)(i).
Section 19(4) requires me to apply the standard of the informed user in relation to all of the above. The standard is that ‘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’.[9]
[9] 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’)
The Owner’s submissions also touch on a declaration of Ben Griffith, founder and CTO of Reidefine Media, made on 5 November 2015 with Annexures A to G. Despite Mr Griffith’s significant experience in relation to mobile devices and related technologies, he did not consider himself familiar enough to make comment on the product to which the Design relates, or similar products.
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. He has also personally owned and used a variety of earphones for mobile phones from several different sources, including from the Owner.
Mok and Schinella both offer evidence of the state of the prior art in the five years leading up to the Relevant Date. Mok provides detail of prior art searches conducted via ‘Google Images’, and Schinella offers detail of prior art searches conducted on design patents in the United States of America. The results of all of these searches are annexed to Caruana. The annexure to Schinella includes an 18 September 2012 review of the Owner’s ‘EarPods’ headphones, which incorporate the Design.
Discussion
The nature of the product
Mr Caruana deduces from his experience and his reading of the relevant particulars on the Register of Designs that the product to which the Design relates is ‘an in-line controller for a set of earphones’. This type of product ‘is intended to be placed along an earphone cable and has a diameter close to the size of the cable.’ As to use of this product generally, Mr Caruana declares that ‘one end of the controller would be connected to a device’ and that the controller ‘would be used to control various functions, for example adjusting the volume, playing/pausing music and answering telephone calls’.
The informed user
Mr Caruana distinguishes between in-line controllers which are placed at the junction between the cable running to the device and to the two earphones (therefore having three cable holes), with in-line controllers of the type shown in the Design, which sit along one of the earphone cables (therefore having only two cable holes). I consider that the product to which the Design relates is, quite obviously, in the latter category. The former category is still relevant to this provision, since it consists of ‘products similar to the product to which the [D]esign relates’. The factors under s 19 must therefore be considered from the perspective of a person familiar with the latter category of in-line earphone controller, or similar products (such as the former category).
Prior art base
Mr Mok and Ms Schinella’s searches cover the period of 7 September 2007 to 7 September 2012. The search results show a very well developed art base, with a wide variety of overall forms of in-line earphone controllers in both of the categories identified above. A person familiar with in-line earphone controllers at the Relevant Date would therefore be accustomed to noting smaller differences in designs.
The art included in these search results corroborate Mr Caruana’s characterisation of the product, as outlined above. Caurana also identifies a number of visual features that are common in the prior art base for the product to which the Design relates:
An overall diameter close to the gauge of the cable
A cylindrical or rectangular overall
shape, in order to ‘look as much like the cable as possible’
The appearance of being integrated into the cable
Colouring similar to the cable
I agree with these assessments of the prior art base. Such features, where apparent, will be given less weight.
To contrast the above list, Mr Caruana also nominates the following visual features which can be used to distinguish between designs in this art field:
The number of buttons on the controller (related to the degree of functionality)
The shape(s) and labelling of button(s)
Colour
The shape of the housing
Since I am comparing line drawings, colour is not relevant to the present enquiry. In contrast, the shape of the housing is central. There are no visible buttons on the Design or the Earlier Design, but other images in the search results annexed to Caruana indicate that a user can interact with three areas by applying pressure. I have included some examples below:
I therefore take it that most of this front area of the Design and the Earlier Design are indeed buttons, albeit concealed.
Freedom of the creator of the design to innovate
Mr Caruana has identified the following visual features as inherent to the function of an in-line controller for earphones:
Circular holes for receiving cable
Volume control button(s)
A ‘centre’ button for play/pause function and for answering telephone calls
A microphone
Given Mr Caruana’s description of this product, I accept that a microphone component is inherent to its function. But this component does not manifest as a visual feature in the Design or the Earlier Design. So, while I accept that a microphone is a component in this type of product, it is not a visual feature that must be considered in the present enquiry. At any rate, if it did appear in either of the designs in comparison, it would be given very little weight as a distinguishing visual feature.
Aside from this small issue, the other features certainly appear to be inherent to function. The shape of the cable holes will be dictated by the shape of the cable, and the prior art shows that, overwhelmingly, that shape will be round. The positioning of those cable holes at either end of the product are more or less set in stone, and shall be read down significantly. The presence of buttons is also certainly to be read down. The creator of the Design would have been somewhat less constrained as regards the shape and configuration of those buttons, market expectations notwithstanding.
Amount, quality and importance of the similarities
For ease of a side-by-side comparison I have placed selected images of the Design and the Earlier Design beside one another in the table below:
| View | The Design | The Earlier Design |
| Perspective | ||
| Top | ||
| Side | ||
| End |
The first apparent similarity is an overall elongate shape, which approximates the cable to which the product is attached. The quality and importance of this area of similarity was addressed by Mr Caruana’s observation that this is common to the art field. It is difficult to offer an assessment of the ‘amount’ of this similarity, since there are many points of difference within this overall shape (discussed below).
Related areas of similarity are the cable holes most visible in the end views. These are identical in shape and configuration. However, as I have indicated above, these have been read down.
Appearing in both side views is a similar looking dividing seam. Having looked over the prior art I am satisfied that such a feature is very common. I also note that from other angles, particularly the end views, the seam appears to be quite dissimilar.
The most striking area of similarity is the indentation visible in the perspective, top and side views – identified in an image at [19] above as the ‘Center Button’. The eye catching quality of this feature must derive at least in part from its rarity. Such a feature is far from common in the prior art, apparently having only appeared previously in the Earlier Design. When comparing the Design and the Earlier Design Mr Caruana refers to this area as ‘similar shaped’, but that this area of the Design has a ‘slightly sharper dip and harder edge’ than the Earlier Design. It is not clear to me exactly what was meant by ‘harder edge’ in this context, but in general I agree with Mr Caruana’s assessments – the fact of this indentation is in common, as is its execution, apart from some slight differences in shape.
Distinctiveness
To summarise my discussion of the relevant factors under s 19 of the Act: the SND is of no assistance, the prior art base is well developed, there were several (though not universal) constraints on the creator of the Design, and the areas of similarity between the Design and Earlier Design are limited. There are several areas of apparent similarity which are likely to be seen as less significant by the informed user, for the various reasons outlined above.
There remains one area of similarity which carries significance: the configuration of the buttons and, to a certain degree, their shapes. While this is no doubt an important area of similarity for a user, there are points of difference significant both in fact and in number.
Mr Caruana’s point that overall shape of the housing is typically used by people familiar with the product to differentiate between designs in the market finds support in the review of the Design which is annexed to Schinella. This article states ‘what has changed is the inline-remote and mic, which is now roughly 25 percent larger with curvier edges.’ It is these curvy edges that stand counter to the similarity in the arrangement of the buttons. This is apparent in all representations, but is most dramatic in the perspective and end views. This curvature effects not only every edge, but transforms the end from a right-angled cylinder shape in the Earlier Design to the softer curved end of the Design. Through this, the housing appears as though it is made from two pieces instead of four.
There are significant features of similarity (the buttons) and of difference (the curves). The areas of difference are I think clearly greater than the areas of similarity, yet s 19(1) of the Act requires that I give more weight to similarities than differences. This cannot be an instruction to always find in favour of the similarity, or the rest of the provision would be meaningless. Instead, this requires that I attach significant weight to apparent similarities, subject to the remainder of the provision. This leaves the assessment rather finely balanced. At this point it is helpful to return to the words of that provision and of s 16(2) of the Act. The assessment is one of ‘substantial similarity in overall impression’. That is, the similarity must be both substantial and based upon an overall impression. Given the attention paid to them in the review annexed to Schinella and by Mr Caruana, I consider that the curved edges present in the Design have a significant effect on its overall impression. On my assessment, the designs are not substantially similar in overall impression.
Decision
I find that no grounds for revocation have been made out for design number 201311215. As a result, examination of this design has been completed, and a certificate of examination shall now issue.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
16 May 2017
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