Apple Inc. - [2013] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 334543 in the name of Apple Inc. – and – examination thereof.

Delegate: Debrett Lyons

Representation: Owner : Thor North of Freehills Patent Attorneys.

Decision: 2013 ADO 1
Sec. 63 examination: subject design found not to be distinctive over prior art base. Examination completed and registration to be revoked.
Background

Apple Inc. (“the Owner”) filed design application No. 15380/2010 (“the Design”) on 9 December 2010, claiming a convention priority date of 16 June 2010 from United States Design Patent application number 29/363,951.
The product to which the Design is applied is described as "Electronic device". It carries a Statement of Newness and Distinctiveness (“SOND”) which I will turn to later.
The Design was registered as number 334543 on 11 January 2011.
On 30 March 2011 a request for examination of the Design was filed.
Examination raised grounds for revocation of the Design which were maintained through several official reports and in consequence of which the Owner asked to be heard.
The matter came before me, Debrett Lyons, a delegate of the Registrar of Designs for a hearing in Melbourne on 16 November 2012. The Owner was represented by Mr Thor North of Freehills Patent Attorneys.
As a result of the hearing the Owner was allowed further time to produce evidence. That evidence was forthcoming and is described later.
There is no disputation of the key issue for determination, being whether or not the Design is distinctive over earlier public disclosure of another design borne by a similar product originating from the Owner.
There was no submission that the product bearing the Design was anything other than a visual display monitor for a computer, television, or other audio-visual source; nor was there any disagreement that the only point of departure of the Design from the earlier disclosure was in a visual feature of the interface between the display face and the remainder of the product.
To put the matter into broad context, during examination and submissions the pertinent feature of the Design for the purposes of assessing its distinctiveness has been described as its “frameless” or “borderless” or “edge to edge” front (display) face.
The Prior Art Base disclosure
Examination requires the Office to have regard to section 65(2)(a) of the Designs Act 2003 (“Act”) which creates a ground for revocation of a registration if the "design is not a registrable design".Section 15(1) states that a design is registrable if it is new and distinctive compared to the prior art base.
Newness and distinctiveness are separate requirements. A first examination report dated 12 August 2011 raised a ground for revocation, alleging that the Design is not new or distinctive because it was substantially similar in overall impression to a disclosure in the prior art base. In particular, the Examiner cited a design for a “LED Cinema Display” published on the Owner’s website ( on 26 May 2010 (“the Prior Disclosure”) which was retrieved by the Examiner by means of the so-called “WayBack Machine” internet archive resource.[1]
[1] Found at >
At the hearing the Owner submitted that the representations of the Prior Disclosure were limited in their usefulness because a lower corner of the perspective view of the display was obscured and the front view showed only a small portion of the top and corner of the design. It was suggested that the representations did not allow a decision maker to “sufficiently … determine whether the Registered Design is substantially similar in overall impression to the Prior Art Design”. The Owner argued that it was then in order for me to consider “alternative images of the Prior Art Design” in line with an earlier decision of this Office to which I will later refer.
Let it simply be said that for the purposes of the comparisons to be made, I have no trouble viewing and understanding the Prior Disclosure, unaided by further material.
What the Prior Disclosure shows is a display screen having three principal parts - a screen, a supporting body, and a stand. The screen is housed within the body such that the body forms a visible rim or frame to the screen which is seen in front view and in all front perspective views. The screen becomes invisible to the viewer when the product is in side view and through all rear perspective views.
Preliminary matters
Three preliminary matters require consideration. The first is to assess the combined effect of (a) the SOND, and (b) the use of dotted outline in some of the Design representations.
The SOND reads:
"Newness and distinctiveness of the present design resides in those features of shape and configuration of the design illustrated in solid lines in the accompanying representations, including the screen edge design shown illustrated in figure 10. In the representations, the fine shading lines illustrate translucency and broken lines illustrated contour, not pattern and ornamentation".
A correction was made during examination to reference the correct figure, a matter having no further significance to this decision[2]. What is relevant, however, is that the SOND cannot easily be read onto the Design drawings, in particular those where broken lines are used since (in addition to the lines indicating translucency) the drawings use two types of broken line.
[2] The correction being made to the Design representation and not to the SOND.
The display stand, the rear panel of the display, and what appear to indicate a camera lens in the usual place at the top of the front screen, and on the rear panel, USB ports and connection cabling, are all shown in broken lines. I note however that the broken lines shown on the rear panel of the display panel differ from the other broken lines in two ways, (i) in style, and (ii) in contrast to others, they are broken lines and not broken outlines.
Accordingly, I treat all remaining broken outline not explicitly described by the SOND in the manner suggested by the SOND, namely, that they show matter which is to be paid less attention in determining what is distinctive about the Design. I have therefore largely discounted the influence of, and references to, cameras, USB ports or stands.
Secondly, I would like to put to rest here an emerging and what I regard as misplaced reliance on what was said by Hearing Officer Herald in the case of Sportservice Pty Ltd [2007] ADO 6. The Owner in the matter before me now submitted that in cases of uncertainty (and, so says it, this being one) “it is appropriate for a product or alternative images of the Prior Art Design to be considered in addition to the cited prior art. A similar approach was taken by the Delegate of the Deputy Registrar of Designs in Sportservice Pty Ltd [2007] ADO 6 (10 October 2007).”
In other cases argued before this Office it has been said that it is generally permissible for the delegate to consider evidence (photographic or physical) of the article corresponding with the registered design at issue or to consider alternative forms of evidence of the prior art located by the examiner. Sometimes, this argument is put on the basis of overstated or imagined defects in the drawings or images. Most often in my observation it is motivated by a desire to introduce material which through use of colour, magnification, orientation or otherwise, is thought to amplify differences between the relevant design and the prior art material.
So, in this case for example, the Owner submitted that:
When one considers the improved images of the Prior Art Design illustrated in Appendix B, which provide a more accurate and true impression of the design, the eye of the informed user is immediately drawn to the highly prominent metallic rim surrounding the screen which is visible from the front of the Prior Art Design and which hides the screen from side view.
The prominence of the rim is brought about by the contrast in colour between the bright, metallic appearance of the silver aluminium rim and the highly reflective, black screen glass that covers the display panel and bezel and abuts the rim. The prominence of this rim is accentuated by the minimalism of the frontal appearance of the Prior Art Design, and the fact that the rim and Apple logo cause a clear visual discontinuity with the screen glass.
In virtually all instances these, what I have called amplifying influences, are immaterial to the comparisons to be made. Whether or not a view or partial view of prior art is scaled up, for example, has no influence on the proper assessments unless there was something patently unclear in the original drawings or images. Whether or not aspects of appearance of the prior art are “silver” or have a “bright metallic” appearance, for example, are irrelevant and do not qualify as visual features[3].
[3] See ss.7(1) and (3)(b).
If the representations of a registered design are unclear, they are simply that – unclear – and are not rendered clear or interpreted and better understood by production of the actual article or other form of capture of its image. If, on the other hand, a matter has come to hearing and there is uncertainty about the prior art disclosure, then the options open to the delegate are either to decide that the disclosure insufficiently anticipates the design at issue for the purposes of newness or distinctiveness, or to revert the design at issue back to examination for further and better information. It is not for the parties to adduce their own evidence of the prior art found by the examiner.
Thirdly, certain clarifying comments should be made here about the scope of the prior art field in so far as that matter influences the proper identification of the informed user.
In the examiner’s second report dated 16 January 2012, it was said that “the informed user base for an ‘Electronic device’ is very broad and in applying the standard I have considered an ordinary household purchaser of electronic goods as being adequate representation…”
During examination the Owner did not contest that characterization of the informed user but the question arises as to whether the informed user standard is referable to the product as it is nominated by the registration, or the class or classes of product(s) reasonably capable of bearing the design.
On its face, the word “product” in section 19(4) might have the same meaning as it is given in other places in the Act.[4] However that section carries a broader meaning in that it refers to the informed user being a person “familiar with the product to which the design relates, or products similar to which the design relates.” The reason for this modification to the concept of product is because the informed user standard would be unworkable if its ascertainment depended on, and could be confined by the title attributed to the product by the owner such as “a display” or “a display with stand” or “a display with imbedded camera” or, as in this case, “Electronic device”.
[4] Principally, ss 5 and 6.
The meaning of the term “electronic device” is broad enough to capture all products that require electricity to function, and is therefore not helpful in deciding the product to which the design relates. To limit the scope of my considerations it will be necessary to consider what product is actually disclosed by the registration. The Design disclosed by this registration is to be ascertained by reference to all relevant elements of the register entry.
Section 5 relevantly defines representation as “a drawing … of a product embodying a design…”. Section 6 in turn defines a product as “…a thing that is manufactured…”. The representations disclose what appears to be a display screen and its housing. This could be a television, computer display or other type of monitor.
Newness
At the commencement of the hearing I made it plain to the Owner’s representative that if there were any ambiguities in what the Examiner might have said, I did not consider that there was any objection that the Design was anything other than new.
Distinctiveness
Section 19 gives an initial instruction to the person making the decision to give more weight to similarities between the designs than to differences between them. Section 19(2) sets out the factors to be considered in assessing substantial similarity in overall impression, as follows:
19(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) …
(4) In applying subsections (1), (2) and (3), the person must apply the standard 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 (the standard of the informed user)
The Owner reasoned as follows:
Notwithstanding the use of similar features there are clear differences between the designs that give the Registered Design a different overall impression to the Prior Art Design. The primary differences that exist between the Registered Design and Prior Art are as follows:
(a)      The Prior Art Design has a prominent contrasting rim around the periphery of the screen when viewed from in front, whereas the Registered Design has no peripheral rim.
(b)     The Registered Design has an uninterrupted smooth screen that extends the full width and height of the monitor from side-to-side and top to bottom.
(c)     In a side view of the Prior Art Design, all that can be seen is the aluminium body. The aluminium body forms the front-most edge of Prior Art Design. In contrast the side wall of the body of the Registered Design stops short of the front face. The front edge of the body is overlapped by the glass forming the continuous front face of the product. This provides a “layered” side-on appearance to the Registered Design.
(d)     The positioning of the glass cover so that it is flush with the side of the body, and forward of it, means that from all positions, other than a viewing position directly behind and within the envelope of the monitor, the visible periphery of at least part of the product is defined by the screen glass. In contrast to this, in all views, including the front view, the Prior Art Design has a metallic peripheral edge.
It would think that submission is four different ways of saying the same thing, but as mentioned earlier, there is no disputation that the designs differ essentially in the way described.
The Owner continued, having regard to the factors listed in section 19(2). With particular reference to section 19(2)(c) the Owner submitted that:
the similarities are in areas of the product that are less important than the areas in which differences exist.
The design is a product intended to be used, and in particular, viewed, primarily from the front or offset from that position. This typical mode of use makes the front and side views of the design more familiar than the rear view of the product to the informed user.
With reference to section 19(2)(d) the Owner submitted that:
The primary constraint on the designer with the present product is the need to leave an unimpeded view of the display panel within the product. Thus, the areas of the product in which the designer can work are the bezel surrounding the screen and the sides and rear of the product.
The bezel of the monitor is of particular importance because it surrounds the display panel and is visible to the product user during use.
Innovation of the designer is also limited by practical considerations such as manufacturing and product durability. Changes that might be considered to be a risk to product durability are ordinarily avoided. In this context, a change such as the removal of the protective aluminium edge that is present in the Prior Art Design, from the edge of relatively fragile screen glass is not driven by practical considerations. Thus it should be inferred that this change is made for its aesthetic value and visual impact in the design.
As submitted above, the screen edge in the vicinity of the bezel is of primary importance to a product of this type. First, it is visible from the front and sides of the product, and as such will be readily visible to a user of the product during viewing of the screen. Second, as most of the front of the display is dedicated to the display panel the bezel offers the designer a region to influence the product’s appearance.
Having regard to section 19(2)(a) the Owner submitted that:
turning to the state of development of the prior art base for the design, the applicant submits that the art of electronic devices, and more narrowly, monitors or displays has a great many designs of a similar nature.
Notwithstanding this well developed prior art base, the examiner failed to identify any design sharing the feature that is the subject of the Statement of Newness and Distinctiveness, namely screen glass that extends from edge-to-edge and top to bottom of the screen, and which is exposed to viewing from the side of the screen.
Reasoning
Under section 65(2) the grounds for revocation of the registration are that (a) the design is not a registrable design, or (b) any other ground prescribed by the Design Regulations 2004. It is only section 65(2)(a) which is of relevance in this case.
Bearing in mind my earlier comments under “preliminary matters”, the only matter for consideration is whether, having regard to the Design representations, the Act, and the standard of the informed user, an “unframed” display screen according to the Design is distinctive over the Prior Disclosure, being an earlier product from the Owner differing immaterially from the Design in all ways other than the fact that the display screen is framed by the display body.
In determining whether the Design is distinctive I must first determine who is the “informed user”.
Informed User
The informed user is a person who is familiar with the product to which the Design relates and pay particular attention to the visual features of the Design described in the SOND. Moreover, since those features relate to only part of the Design, the informed user must have particular regard to that part of the design in the context of the Design as a whole.
Following the hearing, the Owner sought to assist me by way of a declaration made on 15 January 2013 by Mr Phillip Grillo, whom the Owner regards as an informer user of the product.
Mr Grillo has worked in the consumer electronic retail business for 14 years. He is currently Melbourne area manager of Dick Smith Electronics and, prior to taking on that role in 2010, was a manager for JB Hi-Fi for two years and, prior to that, was with Strathfield, first as a salesman and later progressing to a position of senior management.
Section 19 requires that the informed user is familiar with the products to which the design relates or with similar products. I am not told how long ago Mr Grillo was a salesman for Strathfield but I can assume it was long before products according to the Design were on the market. Since then he has held management positions in various companies which all sell an expansive range of consumer electrical goods. Nothing is said of his management responsibilities which might be far removed from the day to day sale of display screens or similar goods. With nothing more to guide me me, I would say that in his managerial capacity he may, from time to time, use products of this kind, but is unlikely himself to be an informed user. The remaining question is whether someone who occupies a management role in a business which exclusively sells consumer electrical products is, de facto, an informed user of all those products. I think that for fairly clear reasons the answer to that question is “no”.

I have carefully read Mr Grillo’s declaration and I come to the view that (i) if Mr Grillo was ever an informed user, it is unlikely that for the purposes of the assessment to be made in this case, he continued to be an informed user at the time of his declaration, and (ii) even if I am wrong in that assessment, he does not in fact make any statements which directly assist me in the determination of distinctiveness of the Design.
I have however for the sake of completeness and for other reasons which emerge, gone on to make an evaluation of his comments. Mr Grillo states that:
In the retailing of electrical products the level of customer knowledge about available products is very high. This has taken off in the last 3 to 4 years because customers often do extensive research on the internet prior to coming to a store.
Customers communicate that they care a great deal about the appearance of a product that they are going to purchase for their home. Customers care about specifications first and appearance second. Although I estimate that between 25% and 40% of customers consider that appearance is more important than specifications.
He goes on:
I was provided with a copy Australian (sic) Design number 334543 ...(“the first design”) … I have been asked to pay particular attention to the features described in the Statement of Newness and Distinctiveness …
Upon reviewing the design presented to me I can immediately tell that this product is a display screen, such as a computer monitor. I can tell this because it has the usual design features expected in this type of product, like a screen and stand. I can also identify that the screen has a camera on the front and connector ports on the back.
I also recognise that the product is an Apple product because it follows their general design appearance of the curved back and the flat front.
…
Back in 2010 I had not seen another product with this frameless look. Usually displays like this have a frame around the screen.
I would think that a feature like this would be more expensive to make, because it would be harder to support the glass. It also exposes the edge of the glass…
Then, with the aid of a copy of material printed from the Web Archive pages of at 26 May 2010 where the “LED Cinema Display” is shown and henceforth described as “the second design”, Mr Grillo continues:
The second design is also a display. It has a glass front, curved back and a stand. It also appears to have a camera in the middle. From the pictures in the document, this design looks like it has a frame around the glass. …
Provided further with what are described by him as “a series of colour photographs of a display…which I am informed show a display of the same second design”, Mr Grillo states that:
From the photographs I can see that in the second design the frame is around the glass and the glass sits inside the frame. From the side of the second design, the glass lies within the frame so you cannot see the glass from the side.”
Then, in more general terms, Mr Grillo makes various comments which I have distilled so far as they are relevant below:
I have been asked what I consider how much (sic) freedom the designer of this type product has when designing a new product.
I was … provided with a page of Google search results showing a series of monitors …they are ordinary monitors. They all have a simple design which is not sleek or flashy. They all have a square box on a stand. They are not in any way sleek.
All of the designs on this page have a frame around the display panel.
When I consider the similarities between the products they both have a curved back and glass front. They both have a camera in the middle and a stand.
My immediate impression is that the first design would appeal more to the customer. It gives a sharper look from the front because you cannot see the frame … This has a big impact. It gives the first product presence, being all glass from the front. It gives a sleek, attractive appearance.
If I consider the first design and the second design and give particular regard to the edge design described in the Statement of Newness and Distinctiveness … I think the first design is distinctive.
For a customer that cares about appearance the first design would be clearly distinctive. It gives a premium appearance.
Several comments can be made about Mr Grillo’s evidence. Firstly, he makes a number of simple observational statements which might be made by anyone. For example, (i) he notes the inclusion of stands or cameras, (ii) that display screens have flat faces, and (iii) that a frameless screen “exposes the edge of the glass”.
Secondly, he makes statements for which he has no apparent qualification. For example, (i) he thinks that a frameless screened monitor “would be more expensive to make, because it would be harder to support the glass”, and (ii) he speculates on the degree of freedom possessed by a designer of this type of product.
He uses language to describe products which does not assist me - for example - sleek, flashy, premium, sharp, having presence, or ordinary.
More fundamentally, it is not clear whether he is in fact familiar with the products in question or whether he is simply asked for comment on material put before him.
Moreover, he bases his comments it would seem not on the Prior Disclosure of record but on photographs (i) not in evidence, (ii) which he is informed (and simply accepts) as showing a display “of the same second design”.
In addition, it is not clear whether he is directing his mind to newness or to distinctiveness. For example, he says: “Back in 2010 I had not seen another product with this frameless look. Usually displays like this have a frame around the screen.”
Further, he either misdirects himself, or is misdirected by his instructor, as to the proper enquiry in terms of section 19(2)(b) and (c). So, for example, (i) he states that “I have been asked to pay particular attention to the features described in the Statement of Newness and Distinctiveness”, (ii) “If I consider the first design and the second design and give particular regard to the edge design described in the Statement of Newness and Distinctiveness … I think the first design is distinctive.”
In short, even if Mr Grillo were an informed user (and I find otherwise) his evidence is sorely faulty. I find that it assists me only by reason of the following statements:
§ the level of customer knowledge about available products is very high because customers often do extensive research on the internet;
§ the majority of retail customers care about specifications first and appearance second - 25% and 40% of customers consider that appearance is more important than specifications;
§ when Mr Grillo was shown the Design he could “immediately tell that this product is a display screen, such as a computer monitor…because it has the usual design features expected in this type of product, like a screen and stand. I can also identify that the screen has a camera on the front and connector ports on the back.”
The Owner submitted that:
The informed user is typically a person that will keep abreast of developments and changes in the relevant product area, including significant technological developments. This is particularly the case with the many technological changes that have occurred in recent years relating to the product or similar products, such as:
·    The switchover to digital television;
·    The increase in availability of high definition (HD) televisions at multiple resolutions;
·    The increase in availability of widescreen displays for computers;
·    The reduction in cost and increase in popularity in flat panel displays compared to CRT displays;
We therefore submit that that an informed user for the present design would be familiar with both the appearance of flat panel displays and quite possibly some significant technological aspects of flat panel displays.
I have no issue with any of those claims but I do observe that many matters on which this informed user concentrates are functional rather than aesthetic changes.
It is open to me to make limited enquiries of my own into matters of public information. I am personally aware of the website as a popular place where new electronic apparatus is reviewed. Visiting that site I saw a section concerned with display monitors. There, various makes and models are reviewed and there is also a “Monitors Buying Guide” prepared by the CNET team. It lists “Three Rules for Buying a Monitor”. It has a section devoted to “Screen Size”. It has another entitled “Key considerations” with factors including “Panel type”, “Viewing angle”, and a host of other considerations. In none of this is there any discussion of frameless screens from either a functional or aesthetic standpoint. Under the section, “Best Monitors”, the CNET team review five models. Of their various attributes, frameless screens is not a consideration. At another place, Apple monitors are reviewed and once more no space is given to the presence or absence of a frameless screen and aesthetic appreciation is limited to comments such as “beautiful looking”. In general terms, I would say that the user comments I read there underscore Mr Grillo’s comment that “customers care about specifications first and appearance second.”
Application of section 19
I have defined the informed user as one who I regard as an ordinary consumer of electronic goods, familiar with computers and computer related products, who takes an interest in new products of that kind released to market either as a potential purchaser of those goods or as a keen amateur computer enthusiast.
This is a narrower class of persons than those identified by the examiner and may be broadly co-extensive with the persons described by the Owner.
I accept the evidence of Mr Grillo that of the class of purchasers of electronic goods (and therefore a section of those that could be considered informed users) only 25%-40% prioritise aesthetic appeal over functionality when deciding on a product.
I take note of the type of information available from the CNET website already described as a broad indicator of consumer interest when it comes to the purchase of products of this kind. I have appropriately discounted the influence of that source to the degree that it might be said that it is primarily focused on product functionality.
I have paid due regard to the SOND and in particular to its direction that the “newness and distinctiveness of the present design resides in those features of shape and configuration of the design illustrated in solid lines in the accompanying representations, including the screen edge design...”.
I accept (albeit that I need not do so) that the Owner very probably meant to draft the SOND to say, “especially/notably the screen edge design”, or similar.
I have ignored for the purposes of assessing distinctiveness (and again, were it necessary to do so I might have reverted the case back to examination for better information) any suggestion that so-called “edge to edge” screens were known before the priority date of the Design.
I have paid less heed for the purposes of assessment to those features shown in broken outline.
I have taken into account the designer’s freedom to innovate but am largely unmoved by the Owner’s arguments since in my view there is broad design latitude even if innovation were limited to what the Owner has referred to as the “bezel”.
I have, in the end, given more weight to similarities between the designs than to differences between them.
I have paid regard to the fact that, in purely quantitative terms, the greater part of the design “is substantially similar to another design, have regard to the amount … of that part in the context of the design as a whole”.
I have paid regard to the fact that, in qualitative terms, the greater part of the design “is substantially similar to another design, have regard to the … importance of that part in the context of the design as a whole” when it is borne in mind that over time and in accordance with vogue, the Owner has accentuated other design features such as colour and translucency.
I have considered Mr Grillo’s seemingly unhelpful statement, on being shown the design representations, that he recognised “the product is an Apple product because it follows their general design appearance of the curved back and the flat front” and, in the end, found it instructive in what is not said. In particular, Mr Grillo is able to somehow put the Design in a manufacturer category without reference to the debated “edge design”. Moreover, Mr Grillo is not deterred from doing so because of the presence of the hitherto unseen, edge design. Put another way, there is nothing in his statement of the kind – “I would think that this is an Apple product but for the edge design I have not seen before” – which might point to the edge design taking on some heightened significance.
Bearing in mind all those factors and taking final account of the legislative intention of the Act to strengthen registered design protection, inter alia, by way of emphasis on greater differentiation between similar designs, I have come to the finding that the Design is substantially similar in overall impression to the Prior Disclosure.
Decision
I am satisfied that a ground of revocation has been made out. On my assessment of the standard, an informed user at the priority date would regard the Design as lacking distinctiveness in overall impression compared to the cited prior art.
The provisions of section 68 now apply. I direct that Registration No. 334543 be revoked.

Debrett Lyons
Hearing Officer
Designs Hearings
3 April 2013

Delegate:	Debrett Lyons
Representation:	Owner : Thor North of Freehills Patent Attorneys.
Decision:	2013 ADO 1 Sec. 63 examination: subject design found not to be distinctive over prior art base. Examination completed and registration to be revoked.