Australian Lock Company Pty Ltd v Lockwood Australia Pty Ltd
[1999] ADO 2
•12 April 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS
Design: Nos. 128979, 129381, 129382, 129605 and 129686 in the name of AUSTRALIAN LOCK COMPANY PTY LTD.
Article: Key blank
Action: Applications by Australian Lock Company Pty Ltd for extensions of the periods of registrations; and notices, under S.27A(4), by Lockwood Australia Pty Ltd, of material relevant to newness or originality of the designs.
Decision: Issued .
Abstract:The registered designs of Australian Lock Company Pty Ltd ("ALCO") differ from prior designs exhibited by Lockwood in a number of respects. The differences mainly relate to the number of grooves and their positioning on the blades of twin-bladed key blanks.
These differences amount to more than immaterial details. The differences are also distinct from features commonly used in the trade.
The periods of registration of ALCO's designs were extended.
DESIGNS ACT 1906
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS
Re:Design Nos. 128979, 129381, 129382, 129605 and 129686 by AUSTRALIAN LOCK COMPANY PTY LTD, applications for extensions of the periods of registrations; and notices, under S.27A(4) by LOCKWOOD AUSTRALIA PTY LTD, of material relevant to newness or originality of the designs.
BACKGROUND
Australian Lock Company Pty Ltd ("ALCO") applied to register the above designs between April and October 1995. The designs relate to key blanks. The applications proceeded to registration between January and April 1997.
Lockwood Australia Pty Ltd ("Lockwood") filed notices, under S.27A(4) of the Designs Act, against all the registered designs. These notices were filed between December 1997 and February 1998. At about the same time ALCO applied to extend the registration periods of the designs.
Lockwood's notices mention details of key blanks, existing prior to ALCO's designs, that are relevant to the newness or originality of ALCO's designs. Concurrently with the notices, Lockwood filed supporting declarations by Mr Hans Esser, research manager for Lockwood, and Mr Terrence Collins, patent attorney for Lockwood.
ALCO filed responses to Lockwood's notices and supporting declarations between January and April 1998.
The application for design 129686 invoked S.25D of the Designs Act. Design 129686 is registered as an obvious adaptation of design 129605 or as a design that differs from design 129605 only in immaterial details or in features commonly used in the relevant trade.
S.27A(18) precludes S.27A(4) from applying to a design covered by S.25D. Consequently I cannot consider Lockwood's notices and declarations in respect to design 129686.
On 16th July 1998 the Designs Office advised the parties that the registrar of designs proposed to extend the periods of registration of designs 128979, 129381, 129382 and 129605. The deputy registrar's reasons for recommending that course of action were also attached to that advice.
On 11th August Lockwood requested a hearing. Lockwood also filed further supporting declarations on 1st October by Mr Esser, Mr Collins and Mr Rodney Loschiavo, a master locksmith with 28 years experience. Subsequently on 22nd December ALCO filed declarations made by five people, either locksmiths or lock designers, each with substantial experience in the industry. The declarants are Mr Garry Etchells, managing director of ALCO, Mr Brian Preddey, officer of ALCO and foundation member of the Master Locksmith Association of Australasia (MLAA), and Mr Ian Dougall, Mr Bruce Hilderbrandt and Mr George Ramsay, all principals, owners or directors of locksmith companies.
The hearing took place in Canberra on 2nd February 1999. Mr Peter Franke, assisted by Mr Michael Buck, attorneys of Watermark, represented ALCO. Mr Preddey was also present at the hearing. Mr Terrence Collins, attorney of Phillips Ormonde & Fitzpatrick, represented Lockwood.
SECTION 25D
Mr Franke suggested that design 129686, registered under S.25D, could stand on its own if I found the period of registration of the corresponding original design 129605 should not be extended. He relied on S.25D(4). In summary this passage states that if a prescribed court cancels the registration of the original design, that cancellation only affects, unless the court orders otherwise, the S.25D design to the point that it is no longer a S.25D design.
Consequently Mr Franke said that only a prescribed court had the power to cancel the S.25D registered design and even then the court would have to expressly order the cancellation of that registration.
However S.25D(4) is dependent on S.28. The latter section enables any interested person to apply to a prescribed court for the cancellation of the registration of a design on the ground of earlier publication of the design. Consequently S.25D(4) only applies in the specific circumstances of such an application being made before the court. In the present case no such application has been made. Accordingly S.25D(4) is not appropriate.
The appropriate section is S.25D(3). A design registered under S.25D remains in force so long as the registration of the original design remains in force, and no longer. This means that if the registration period of design 129605 is not extended, then the registration of design 129686 is also not extended.
In view of S.27A(18), design 129686 has no further application in this decision. The outcome against design 129605 will correspondingly also apply to design 129686.
THE REMAINING DESIGNS
Registered designs 128979, 129381, 129382 and 129605 all relate to key blanks. The key blanks are shown in their intermediate form prior to their supply to locksmiths. In this form the key blanks appear as V-shaped, twin-bladed blanks. In the key and lock field these types of keys are referred to as Bilock keys.
The statements of monopoly essentially claim the features of shape and configuration applicable to key blanks as shown in the relevant representations. Three of the statements specifically monopolise the cross sectional shape of the blade portion of the key blanks. The remaining statement draws particular attention to the positioning of the grooves on the inner surface of the blank.
The representations show plan, end and perspective views of the key blanks. The blanks differ from each other by the number and/or location of longitudinal grooves on the inner surfaces of the blanks.
The representations for registered design 128979 are depicted below.
DEPUTY REGISTRAR'S RECOMMENDATION
Of the 28 exhibits HE1 to HE28 accompanying Mr Esser's first declaration the deputy registrar primarily confined his consideration to exhibits HE12 to HE23. The remaining exhibits either do not disclose adequate publication details, were published after the dates of the present four registered designs, or clearly do not anticipate these designs.
The deputy registrar concluded there is no prior publication or prior registration of any one of the four designs under consideration. Additionally the deputy registrar found Lockwood had not provided sufficient evidence to establish that variations over the prior art in the grooves of the blanks were features commonly used in the trade. In the latter respect the deputy registrar did not have Mr Esser's and Mr Collins' second declarations or Mr Loschiavo's declaration at his disposal. Lockwood filed these declarations after the deputy registrar recommended the extension of the periods of registration of the four designs.
APPLICABLE LAW
S.17(1)(a) provides as follows:
"17.(1)Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design-
(a) differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article;"
In considering whether the registered design is new or original it is the appearance of the design as a whole as judged by the eye alone which is important. The eye should be that of an instructed person; that is, the eye of one who knows what was common trade knowledge and usage in the class of articles to which the design applies (Phillips v Harbro Rubber Co (1920) 37 RPC 233). Ordinary trade variants, routinely used in the trade and introduced into an old design, do not make a new or original design.
A design that differs from an earlier design in small details requires careful consideration since immaterial details would deprive a design of newness or originality. This consideration needs to be made having regard to the nature of the article (Le May v Welch (35 AOJP 2512)) and to the fundamental form and development of such articles in the trade (D Sebel & Co Ltd v National Art Metal Co Pty Ltd ((1965) 10 FLR 224)).
The D Sebel (supra) decision also states the onus lies with the party asserting invalidity of the registered design to establish that that is the case.
EVIDENCE
In his first declaration Mr Esser provides numerous examples of prior key blank designs. He also says the use of profiling grooves was well known in Australia prior to 1995. Mr Esser further states the number of grooves, their location and shape were matters of choice, and variation of those parameters was expected and common trade practice.
ALCO's responses essentially state that the issue is not whether the use of profiling grooves was well known or whether their variation was common trade practice. Instead the issue is whether ALCO's key blank designs, in shape or configuration, can be judged by the eye to be different from earlier, published key blank designs. ALCO suggest Mr Esser appears to be confusing the notions of concept and design in pursuing his line of argument.
Mr Esser's second declaration includes two further exhibits of prior key blank designs and commentary about Lockwood's prior use of several of those designs. Mr Collins' accompanying declaration provides detailed analysis of the degree of change allowed by the Designs Office in the dimensions and positions of features of another of ALCO's registered designs. Mr Collins says the changes allowed in this case are more than the re-positioning of the groove. The changes also include the cross-sectional shape of the groove, substantial changes in the groove's depth and width, and increases in blade thickness. Mr Collins states the allowance of changes of such magnitude in the one design registration suggests the Designs Office considers that such changes do not alter the nature of the design and therefore make the differences insignificant. He also notes this position contradicts ALCO's argument that the criticality of small differences in key profiles are well understood by locksmiths and therefore small differences in profile constitute new designs.
Mr Loschiavo cites numerous examples of material showing prior key blank designs. He states this material came into his possession at various times all well before 1995. Mr Loschiavo also essentially supports the statements of Mr Esser's first declaration. Mr Loschiavo says the variation of profiling groove position, shape or number was a commonly practiced method of extending the combination range of lock systems prior to 1995.
On the other hand Mr Etchells notes that Australian standards in the lock manufacturing industry use patent and design registrations as criteria to guard against duplication of keys by other manufacturers. Mr Etchells includes relevant sections of the standards in his accompanying exhibits. The standards rely on patent and design registrations as means for precluding manufacturers from producing the restricted profiles of other manufacturers to thereby maintain appropriate levels of security. Consequently Mr Etchells asserts that lack of design protection for changes in key profiles would compromise master key systems.
Mr Etchells also states that locksmiths are very experienced in recognising small differences between varying profiles. He further says the visual differences between the present designs and the prior examples would be readily distinguished by a locksmith.
Mr Preddey, Mr Dougall, Mr Hilderbrandt and Mr Ramsay all essentially support Mr Etchells' statements.
DECISION
The relevant trade
The Phillips (supra) case suggests an important issue in assessing newness or originality of a design is its appearance to the eye of an instructed person, that is, the eye of one who knows what was common trade knowledge and usage in the relevant field.
Mr Collins contended that the relevant person is a lock manufacturer since such a person would be the producer of the ALCO key blanks. He also said that to consider differences in the designs in the eyes of a locksmith was applying too high a level of detailed comparison of the ALCO designs against prior designs. He said locksmiths have a functional interest in making keys fit with locks and consequently have too detailed an eye for such a comparison.
On the other hand Mr Franke contended the relevant person is a locksmith since such a person is the intended recipient of the key blanks in their intermediate V-shaped form as depicted in the above representations.
The Phillips (supra) case requires designs to be compared in the eyes of one who knows what was common trade knowledge and usage. In the present circumstances this could equally be a lock manufacturer or a locksmith. Furthermore there is little real difference whether the relevant person is the lock manufacturer or the locksmith. The evidence from both parties suggests that, both the lock manufacturer and the locksmith need to have keen eyes for detail, and that they both consider slight changes to be critical aspects of key blank design.
In any case the locksmith is the intended user of ALCO's key blank designs. This person is required to perform further work or modification to the key blanks to change the blanks from their intermediate form into their final U-shaped form and to include bittings across the tops of the blades. I will consider the designs as they appear to the eyes of a locksmith.
At the beginning of the hearing I said I would also welcome submissions from the parties on the issues and conclusions covered in the deputy registrar's recommendation and any other points that the parties felt were relevant and not covered in the recommendation. In the latter respect I particularly invited submissions on the extent to which the differences between the ALCO key blank designs over prior key blank designs are immaterial details.
Immaterial details
Mr Collins acknowledged there are differences between the ALCO designs and the exhibited prior designs. By way of example he firstly pointed out that Australian patent specification 557945 (exhibit HE13) shows a rib at the outside surface of the blade at the outer end of each groove. The ALCO designs do not show such a rib. Mr Collins referred to Mr Esser's comments in his first declaration to suggest the difference arises from a different manufacturing technique. Mr Esser states the grooves shown in specification 557945 appear to have been formed by a stamping or pressing operation and that has produced the rib. Mr Esser further states the absence of such ribs in the ALCO designs suggests the grooves in these designs have been formed by a cutting or similar material removing operation. Mr Collins contended a different manufacturing technique that results in one design having a rib while another does not is a difference in design that is an immaterial detail.
The way in which an article is produced is irrelevant. It is the appearance of the design of the article as a whole as judged by the eye alone which is important (Phillips (supra)). The ribs in specification 557945 are only apparent at the extreme ends of the grooves of the key blades. They are also only a minor protrusion. Consequently the absence of ribs in the ALCO designs is an immaterial detail compared to that shown in specification 557945. In respect to the ribs I agree with Mr Collins' conclusion on the basis of the appearance of the ALCO designs compared with specification 557945.
A second difference is the number of grooves in the key blanks. The ALCO designs 128979 and 129605 each have two grooves. Designs 129381 and 129382 each have just one groove. The exhibited prior art in respect to Bilock keys all show key blanks with multiple numbers of grooves. A close example is the above-mentioned specification 557945. Most commonly the number of grooves is two although some prior art shows key blanks with four grooves. None of the prior art in respect to Bilock keys shows key blanks with just one groove. Consequently I need to determine whether the provision of just one groove in designs 129381 and 129382 is an immaterial detail over the prior art.
Mr Collins cited the Polglase v BTR Indeng Pty Ltd decision (31 IPR 631) and the Aluminium Specialities Pty Ltd decision (23 IPR 86). He relied on these decisions to say that, in assessing the differences between features of designs, one must take into account the relative size of the features compared with the whole designs. He also said the Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd decision (6 IPR 361) states that one should take into account the whole appearance of the relevant designs and conclude their distinctiveness based on the totality of the features. Mr Collins noted the Dalgety (supra) decision says this should particularly be the practice where the statements of monopoly of the designs under question relate to the whole designs. The statements of monopoly for the ALCO designs relate to the whole designs. On this basis Mr Collins stated the presence of just one groove in each of the ALCO designs 129381 and 129382, as opposed to two grooves, is an immaterial detail.
Mr Franke submitted the evidence from ALCO shows the number of grooves is a critical aspect of key blank design. He suggested that locksmiths would not consider variations in the number of grooves as immaterial differences.
I accept the principle from the Dalgety (supra) decision that a design ought to be looked at in its entirety. In applying this approach the presence of just one groove in each of designs 129381 and 129382 is a readily apparent difference from prior designs showing two or more grooves. Designs 129381 and 129382 leave one blade of the key blank without any groove at all. On the other hand, in most of the exhibited prior art, each of the twin blades of the key blanks has at least one groove.
It may be argued that prior twin-bladed designs with two or more grooves on one blade and no grooves on the other blade more closely resemble designs 129381 and 129382. However the key blanks of 129381 and 129382 with just one groove on just one blade are still distinctly different in appearance to any of the exhibited prior key blanks with two grooves on just one blade.
The presence of just one groove on the key blanks of designs 129381 and 129382 is a material difference over the exhibited prior art.
A third difference resides in the grooves of the ALCO key blank designs being in slightly different positions on the blades of the key blanks compared with the exhibited prior art designs. Mr Collins acknowledged this difference. From Mr Esser's and Mr Loschiavo's declarations though, Mr Collins said such variations in groove positioning are immaterial to people working in this field when the designs are viewed as a whole. He relied on the Polglase (supra), the Aluminium Specialities (supra) and Dalgety (supra) decisions to support the view that designs be compared as a whole. Mr Collins suggested the small changes in groove positioning in relation to the designs as a whole made designs 128979 and 129605 still basically look the same as the designs shown in patent specification 557945, registered design 122747 (exhibit HE17), registered design 122748 (HE18) and registered design 122749 (HE 19).
From Mr Etchells' statements, Mr Franke submitted that even small variations in groove positioning would be easily noticed by a locksmith. He suggested such variations are critical differences to a locksmith in the appearance and function of key blanks. Consequently Mr Franke said that variations in groove positioning cannot be considered as immaterial details.
The Polglase (supra) decision concerned slight changes in the positioning of dowel slots in a section of movable wall track. The decision states that first impressions are important in assessing newness or originality of a design. The decision further relied on the Dart Industries Inc v Décor Co Pty Ltd case (15 IPR 403) to say that precise mathematical comparisons are not to be applied in assessing the newness or originality of designs.
These points are pertinent in the present case. Mr Collins presented some mathematical analysis concerning distinctions with other ALCO designs. However the Dart (supra) case suggests such analysis is not appropriate. In any case such analysis is not necessary to distinguish the present designs 128979 and 129605 from patent specification 557945, and designs 122747, 122748 and 122749. First impressions show differences in groove positioning between the present designs and the exhibits of the order where grooves are either adjacent to an edge, or adjacent to a base, or slightly away from the edge or the base of the respective blades of the key blanks. In the light of Mr Etchell's evidence and Mr Franke's comments in respect thereof, I would expect these differences in location to be at least equally apparent, without mathematical comparisons, to someone working in the trade, such as a locksmith (Phillips (supra)). From Mr Esser's and Mr Loschiavo's evidence, Lockwood similarly appear to support the view that people working in the trade would readily recognise such differences by eye alone.
It may be said that such differences in groove positioning are not startling variations. On the other hand the Sebel (supra) case suggests the nature of certain articles means the element of newness or originality will of necessity be within a small compass and still the corresponding designs are capable of registration. The Sebel (supra) case further suggests this applies provided there is a difference in the fundamental form of the article. In that case the difference resided in the distinctive splay of the legs of a chair.
In the present case, key blanks are a field where designers are constrained by size and functional requirements. Consequently key blanks also come into the category of articles where newness and originality will of necessity be within a small compass.
Mr Collins suggested there are two levels at which the fundamental form of key blank designs ought to be looked at. At one level he said the fundamental form of a key blank is a V-shaped blank without grooves. Mr Collins said registered design 86895 (HE15) is such a form. At a second level Mr Collins said the fundamental form may be a V-shaped blank with grooves. Such an example is registered design 122748. Mr Collins said, in either case but particularly in the latter case, none of the present ALCO designs differ fundamentally from either form of key blank and therefore do not warrant design registration.
Mr Franke said the fundamental form is a key blank with a single blade. This is an original form of key blank. On the other hand ALCO's blanks are V-shaped twin-bladed designs. Mr Franke said the twin-bladed blank is a departure from the fundamental form. Accordingly he suggested the ALCO designs are worthy of design registration.
By suggesting that historical or original key blank designs make up the fundamental form of designs in this industry, both parties have read more into the issue of fundamental form than appears to be envisaged by the Sebel (supra) case. That case simply compares a registered design with a number of earlier published designs in turn. The case suggests that if there is a difference in the fundamental form between the registered design and any earlier publication then the design is new or original.
In the present case I have noted earlier there are recognisable differences in groove positioning based on whether grooves are either adjacent to an edge, or adjacent to a base, or slightly away from the edge or the base of the respective blades of the present ALCO designs compared with prior designs. The evidence from both parties supports the view that people working in this field readily distinguish such differences of appearance as a routine part of their work. Consequently variations in groove positioning of the order outlined above are differences in the fundamental form of the designs. This suggests the differences in the present ALCO designs compared with prior designs are material differences.
Mr Collins said the Designs Office has allowed amendments to vary the groove positioning in some of the present and other ALCO design applications during examination of those applications. He noted some of the allowed amendments for the same applications varied the groove positioning to at least an equal or greater extent than the variations between the present ALCO designs and prior designs. Consequently Mr Collins asserted the Designs Office does not regard such variations as altering the nature of the designs, and therefore the latter variations must be immaterial differences.
The Designs Office conducts examinations of design applications on an ex parte basis. Reports and correspondence are communicated only between the office and the respective applicants. There is no provision during examination for considering experts' evidence from applicants nor for other parties to challenge applications or present counter evidence. Consequently the Designs Office examines applications with certain limitations. In this light the allowance of amendments by the office to allow variations of a design is irrelevant for determining whether differences between two designs, as they appear to the eye of a relevant expert such as a locksmith, are material differences.
Overall the variations in groove positioning between the present ALCO designs and any of the exhibited prior designs are more than immaterial details.
Features commonly used in the relevant trade
Mr Collins submitted that Mr Esser's and Mr Loschiavo's declarations state it was common trade knowledge to vary the number and the placement of profiling grooves to extend the combination range of keys. In support Mr Collins cited specification 557945 which discloses key blanks of similar design to those of the present ALCO designs. He notes a passage in that specification proposing to selectively provide bending machines which will receive only a particular intermediate key blank. The specification says a particular locksmith will thereby be limited to selling a predetermined configuration as far as grooves and ridges are concerned. Mr Esser says it is apparent from this statement that the intention is to adopt the well known variable profiling system. He also states the profile variation would be achieved by changing the number, shape or location of the profiling grooves. Mr Loschiavo says the specification conveys to him the intention to provide a number of differently profiled keys. He understands this to be achieved by variation in number of profiling grooves, through having at least one groove on at least one of the two blades of a key blank, and by variation in positioning of the grooves.
Mr Collins relied on the above comments by Mr Esser and Mr Loschiavo to affirm that it was not significantly different to provide key blanks with one groove, as in designs 129381 and 129382, or with two grooves, as in designs 128979 and 129605. He also suggested the variation in groove positioning is nothing significant to people working in this field, such as Mr Esser and Mr Loschiavo. Consequently Mr Collins said variations in number and positioning of grooves are common trade variants.
Mr Franke suggested Lockwood are basing their objections on an argument of well known techniques in the trade. He said the issue is not whether well known techniques existed for creating various numbers of grooves in various positions but whether such particular forms of profiles were commonly used in the trade. Mr Franke said Lockwood had not provided any evidence to show the latter is the case.
In respect to the number of grooves, registered designs 129381 and 129382 appear to be somewhat unique in having only one groove. The Bilock key designs shown in Lockwood's evidence mostly show two grooves. Some of these designs have both grooves on one blade, others with one groove on each blade. Some designs show four grooves. Lockwood's evidence includes drawings showing several hundreds of key designs yet none of those designs show a Bilock key blank with just one groove.
In the Hart v Oz-Post Pty Ltd case (unreported decision, issued 19th March 1997, on designs 123294 and 123404) the hearing officer dealt with a post support assembly with three fins whereas most prior designs had four fins. The hearing officer found the lack of prior designs (with one exception) that had three fins against a multitude with four fins suggested that three fins was not a trade variant to four fins.
The same situation applies in the present circumstances. There is a wealth of prior Bilock key blank designs with two grooves but there is no prior design shown in Lockwood's evidence where a Bilock key blank has just one groove. In line with the Hart (supra) case, there is insufficient evidence to show Bilock key blank designs with just one groove are common trade variants to Bilock key blank designs with two grooves.
In respect to groove positioning, Mr Esser's and Mr Loschiavo's evidence predominantly states that techniques for providing variable profiling are well known and therefore a multitude of variations in number, shape and positioning of grooves could be produced. In particular I note their statements of the intended outcomes of variable profiling systems. On this point though I must agree with Mr Franke. Intentions or possibilities of what could be produced by well known profiling systems are not enough. The issue is whether Bilock key blanks with grooves in varying positions were commonly made and used in the trade.
There is insufficient evidence to show that variations in groove positioning adjacent the edge, the base, or slightly away from the edge or the base of the blades of Bilock key blanks were variations commonly used in the trade.
It is pertinent that Lockwood is mainly relying on several of ALCO's own earlier designs to demonstrate common use in the trade. On the other hand the activities of one company does not demonstrate common use throughout the trade unless that company dominates the market. There is no evidence before me of ALCO dominating the market.
Lockwood's evidence falls short of establishing that differing arrangements of profiling grooves for twin-bladed key blanks were features commonly used in the trade.
The variations in number and positioning of grooves amongst the present ALCO designs are distinct from features commonly used in the trade.
CONCLUSION
The ALCO designs differ from prior designs in a number of respects. The differences reside in the number of grooves and their positioning on the respective blades of key blanks. The differences are more than immaterial details and are also distinct from features commonly used in the trade.
Designs 128979, 129381, 129382 and 129605 are new and original designs over the exhibited prior art.
Accordingly I extend the periods of registration of those designs.
COSTS
Both parties submitted that costs should follow the event. I am not aware of any reason to depart from this practice. Lockwood have been unsuccessful with their S.27A(4) notice. Consequently I award costs against Lockwood.
M G Kraefft
Delegate of the Registrar of Designs
Attorneys for the applicant : Watermark, Sydney.
Attorneys for the informant : Phillips Ormonde & Fitzpatrick, Melbourne.
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