Apple Inc
[2017] ADO 2
•31 March 2017
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination by Apple Inc of registered design numbers 351994, 351995, 351996, 351997, 351998 and 351999 (design numbers 20135361, 201315362, 201315363, 201315364, 201315365, 201315366) in the name of Apple Inc.
| Delegate: | Adrian Richards |
| Representation: | Carl Harrap and John Dower of FPA Patent Attorneys Pty Ltd |
| Decision: | 2017 ADO 2 Examination of six designs under section 63 of the Designs Act 2003 (Cth) – section 19 considered – three designs not distinctive over the prior art base – designs revoked – three designs new and distinctive over the prior art base – examination certificates to issue |
Background
On 18 October 2013 Apple Inc (‘the Owner’) filed six applications for registration of designs (together, ‘the Designs’) under the Designs Act 2003 (Cth) (‘the Act’). The Designs passed the minimum filing requirements and formalities checks, and were entered on the Register of Designs on 13 November 2013.
The Designs are the same in almost every aspect. All list the same 17 designers, and bear the same product name ‘electronic device’. The Designs each claim the same priority date of 18 April 2013 (‘the Relevant Date’) from the same filing in the United States of America – Design Patent number 29/452631. Five of the six Designs are accompanied with the same Statement of Newness and Distinctiveness (‘SND’): ‘newness and distinctiveness resides in the features of shape and configuration shown in the solid outline in the accompanying representations.’ The odd one out, design number 20135361, has no SND. The representations are almost identical, differing only in their deployment of broken and solid lines. To provide an overview, I have set out below a pair of isometric representations for each of the Designs.
Design number 201315361 (registration number 351994)
Design number 201315362 (registration number 351995)
Design number 201315363 (registration number 351996)
Design number 201315364 (registration number 351997)
Design number 201315365 (registration number 351998)
Design number 201315366 (registration number 351999)
The Owner sought examination of the Designs in a series of requests filed during late January to early February 2014. The Designs were examined concurrently, with identical first adverse reports issuing against all six on 17 June 2014. The prior art cited therein was taken from four online news articles published between 21 March 2013 and 11 April 2013, and a ‘YouTube’ video published on 10 April 2013. The news articles all speculate on details of the Owner’s upcoming budget version of its ‘iPhone 5’, and include photographs of either one of two different artist’s impressions. One of the mock-ups is credited to Martin Hajek (‘the Hajek Design’), and the author of the other is unnamed (‘the Translucent Design’). I have set out examples of both below (together, ‘the Citations’).
The Hajek Design
The Translucent Design
Neither the ‘YouTube’ video which is referred to in the first examination reports nor any images from it remain on the official file, and the hyperlink is now broken. Whilst this is unfortunate, based on other correspondence on the file I am reasonably certain that the video merely included images of one or both of the Citations.
The Owner responded to the first examination report in relation to design number 20135361 on 30 October 2014, and a second adverse examination report issued on 6 November 2014. The Owner responded again on 2 December 2014, this time in relation to all of the Designs. Apart from making submissions on the examination, the December responses also included a request to be heard ‘[i]n the event the examiner does not agree’. More adverse examination reports issued against the Designs on 12 December 2014, and so the Owner was subsequently invited to pay the hearing fees. The hearing was set down for 10 November 2015 in Canberra, which I conducted as a delegate of the Registrar of 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).[1] The grounds prescribed in the Regulations are not relevant to the present examinations.
[1] Designs Act 2003 (Cth) ss 65(1), 65(2)(a).
A design means the overall appearance of the product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation) of a product.[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 designs publicly used in Australia, and designs published in a document anywhere.[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 apparent difference between all of the Designs and both of the Citations, more relevant for present purposes is s 16(2) of the Act:
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 my findings I must also:
have regard to the state of development of the prior art base for each of the Designs[6]
where 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
have regard to the freedom of the creators of the Designs to innovate[8]
[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).
For the five designs which included an SND identifying particular visual features of their respective designs as new and distinctive, I am required to have particular regard to those features.[9] Since the features identified each of in the SNDs relate to only part of their respective design, I must have particular regard those parts in the context of the design as a whole.[10]
[9] Designs Act 2003 (Cth) s 19(2)(b)(i).
[10] Designs Act 2003 (Cth) s 19(2)(b)(ii).
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’.[11]
[11] 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’)
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. The sole annexure to Schinella includes four news articles from September 2013 relating to the ‘iPhone 5c’.
I was also offered a specimen of this ‘iPhone 5c’ at the hearing for my inspection. As a result I am satisfied that the Designs relate to various visual features of that particular model of touchscreen smartphone.
Discussion
Standard of the informed user
The product name appearing on the Register of Designs, electronic device, is rather vague. Both of Mr Griffith and Mr Caruana through their experience deduce that the register entries for the Designs that the product in fact depicted is, as Mr Griffith puts it, ‘a modern day touchscreen smartphone’. The factors under s 19 must therefore be considered through the lens of a person familiar with modern day touchscreen smartphones, or similar products.
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.
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.
Amount, quality and importance of the similarities
The Citations almost entirely anticipate the Designs. The overall body shape, and the shape and configuration of the various apertures and buttons are in most respects the same. In an apparent concession to this, Owner’s evidence and submissions hone in on three specific points of difference, all of which are illustrated by this marked up partial image from the left side view of design number 201315361:
The blue circle stands for two points of difference. First, the transition between the side wall and the screen in the Citations appear to be bevelled (more obviously in the Hajek Design) while in the Designs this transition is stepped. Second, as this side wall terminates, it curves in toward the screen giving a rounded appearance to the edge. The red circle serves to highlight the shape of the curvature between the side and back of the phone.
Mr Caruana declares that this combination of curves ‘differs from many of the other smartphone designs, which tend to have the same edge on the front and back’. He also notes that the particular stepped transition in the Designs, while similar to other stepped edges in existence at the Relevant date, due to the rounded edge is ‘a different shape’ to other examples in the prior art base.
The noteworthiness of these curves is highlighted in the articles annexed to Schinella which variously describe the iPhone 5c as having ‘a subtly curved plastic back’, ‘more curved compared to the sharp, chamfered edges of the iPhone 5’, and ‘edges [that] curve neatly around the sides before touching the glass front’.
The Owner submits that the evidence of Messrs Griffith and Caruana is that the sum of these differences is sufficient to afford the Designs ‘a different appearance’ to the Citations. While a different appearance is sufficient to find that the Designs were new at the relevant date, for a finding of distinctiveness, the significance of the many similarities must be borne in mind. These include the overall shape and configuration of the product, and the precise shape and configuration of virtually all of the apertures and buttons – all of which are features that Messrs Griffith and Caruana have identified as being useful for telling apart designs in this art field.
Statements of Newness and Distinctiveness
Design number 201315361 has no SND, meaning that no particular attention must be paid to any visual feature beyond those which have already been discussed above.
The SND for design number 201315362 requires particular attention be paid to the back piece, the glass, the screen, the speaker and the circular button at the lower end of the face.
The SND for design number 201315363 requires particular attention be paid to the back piece and the glass.
The SND for design number 201315364 requires particular attention be paid to the back piece, the glass and the screen.
The SND for design number 201315365 requires particular attention be paid to the entire back piece, and all buttons and apertures apart from the speaker and the circular button at the lower end of the face.
The SND for design number 201315366 requires particular attention be paid to the back piece only.
Similarity in overall impression - conclusions
The Owner’s submissions and evidence indicate that it is the curves of the back piece, in combination with the stepped transition to the glass screen that may provide the requisite difference in overall impression from the Citations. Contrary to this are the many points of identity between the Designs and the Citations which have been identified as being features that people familiar with touchscreen smartphones habitually consider as being elements that might distinguish one design from the next.
Through its SND, only design number 201315366 specifically relates to the combination and appearance of the curves that attracted such attention from Messrs Griffith and Caruana, and in the articles attached to Schinella. The SNDs of design numbers 201315363 and 201315364 also draw attention in a relatively confined manner toward these curves, but in combination with the glass screen, and thus also to the stepped transition from the side wall to the screen. Given the constraints on the designers to innovate, the highly developed art base, the testimony of Messrs Griffith and Caruana and their respective SNDs, I find that no grounds for revocation have been made out in respect of design numbers 201315363, 201315364 and 201315366.
In contrast, the SNDs for design numbers 201315361, 201315362 and 201315365 draw are not so focused. Having no SND, design number 201315361 necessarily relates to the shape and configuration of the entire design, whilst the SNDs of design numbers 201315362 and 201315365 require that particular attention be paid to the combination and arrangement of the buttons and apertures – features which are anticipated by the Citations. Despite the constraints on the designers to innovate and the highly developed art base, design numbers 201315361, 201315362 and 201315365 share many areas of similarity with both of the Citations and those areas of similarity are emphasised in their respective SNDs, I therefore find that these three designs were not distinctive at the Relevant Date.
Decisions
I have found that design numbers 201315361, 201315362 and 201315365 were not distinctive at the Relevant Date. As a result, these three designs are not registrable and grounds for revocation have been established.
Design numbers 201315361, 201315362 and 201315365 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.
I have found that no grounds for revocation have been made out for design numbers 201315363, 201315364 and 201315366. 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 March 2017
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