Babyliss Faco SPRL
[2016] ADO 1
•15 January 2016
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 351553 in the name of Babyliss Faco SPRL – and – examination thereof.
Delegate: Debrett Lyons Representation: Decision on the written record. Decision: 2016 ADO 1
Sec. 63 examination: subject design found not to be distinctive over prior art base. Examination completed and registration to be revoked.Background
Babyliss Faco SPRL (“the Owner”) filed design no. 201314737 (“the Design”) on 19 September 2013, claiming a convention priority date of 10 April 2013 (“the Priority Date”) from Registered Community Design No.002217927-0001 filed with OHIM.
The product to which the Design relates is described as a "Hair styling apparatus". It carries a Statement of Newness and Distinctiveness (“SOND”) which I will turn to later.
The Design was registered as number 351553 on 25 October 2013. The top perspective view and left hand side view of the Design taken from the representations of the registration are shown below.
On 29 November 2013 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.
After attempts to agree a hearing date, the Owner’s representatives, Wrays, elected instead to have the matter determined on the written record.
In accordance with directions I set, written submissions were filed together with statutory declarations from Mr Aaron Spowart (“Spowart”) and Ms Pauline Falach (“Falach”).
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 originating from the Owner.
The Prior Art Base disclosure
Examination requires the Registrar 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. In this case there was no claim that the Design is not new, only that it is not distinctive because it is substantially similar in overall impression to a disclosure in the prior art base. In particular, the Examiner cited another design for essentially the same product as disclosed by Australian Registered Design No. 348730 and European Registered Community Design No. 002115832-0008.
Both cited registrations belong to the Owner. Australian registration No. 348730 has a priority date of 9 October 2012 by reason of section 15(2)(c) of the Act and a convention priority claim based on the filing date of the Registered Community Design No. 002115832-0008. The citations share the same representations and so for the purposes of this decision I will treat AU 348730 as the relevant prior art disclosure (“the Prior Design”). The citation of Registered Community Design No. 002115832-0008 was therefore redundant notwithstanding that its publication date also predates that of the Design.
The Prior Design is a product described as a “Hair straightener and curler” and the left hand side view of the Prior Design as shown in the representations is shown below as Figure B.
The SOND accompanying the Prior Design reads:
"Newness and distinctiveness is claimed in the features of shape and/or configuration of the Hair Straightener And Curler depicted in the accompanying representations."
The declarations relied upon by the Owner differ in the terminology used to refer to some of the features of the Design and the Prior Design. I have no difficulty understanding the corresponding design features and for convenience will follow the Owner in adopting the language used by Spowart.
Doing so, it is agreed by the declarants that the Design and the Prior Design have, in terms of visual features, three main constituent elements being (a) a barrel casing, (b) an arm, and (c) a swivel cord, all self-evident in the representations shown above.
Distinctiveness
Section 19(1) gives an initial instruction to the person making the decision whether or not a design is substantially similar in overall impression to another design to give more weight to similarities between the designs than to differences between them. Section 19(2) then 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) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(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)
S. 19(4) The informed user
The Owner relies on the statutory declarations Spowart dated 24 September 2015 and Falach dated 25 September 2015 both of whom, it is submitted, are informed users for the purposes of section 19(4).
The Owner’s written submissions were that:
The informed user is:
(a)a user of the class of product in question;[1]
[1] Review 2 Pty Ltd (in liq) v Redberry Enterprise Pty Ltd (2008) 79 IPR 214, [19].
(b)"reasonably informed; not an expert but more informed than an average consumer";[2] and
[2] LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941, [59].
(c)"reasonably familiar with the nature, appearance and use of the products of the relevant kind".[3]
[3] Designs Examiners’ Manual of Practice and Procedure, [D09.4.6.3].
The product to which the Design relates is a hair styling apparatus and, more specifically, a hair curler. The examiner of the Application postulated the informed user as "a man or woman who may be in the hairdressing industry and have particular knowledge of, and familiarity with hair styling trends".[4] Babyliss respectfully submits that, whilst the informed user is someone in the hairdressing industry, in this case they should relevantly have a particular knowledge of hair curlers, rather than hair styling trends. Practically, whether the knowledge of the informed user must be of hairdressing trends or hair curlers, both Mr Spowart and Ms Falach have the requisite familiarity, given that they are and were at the Priority Date each professional hair stylists.
[4] Examination report number 3, issued 2 September 2014, pg 2 para 1.
Both declarants are accordingly informed users within the meaning of section 19(4) of the Designs Act by virtue of their use of, and familiarity with hair curlers, as is discussed in detail below.
Mr Spowart
Mr Spowart’s familiarity with hair curlers and hair styling trends is evidenced by the facts that he has, in the course of working as a hair stylist:
(a)regularly used hair curlers to style clients’ hair since he began his career as a hair stylist in 1999;[5]
[5] Spowart, [9].
(b)purchased his own hair curlers since 1999;[6]
[6] Spowart, [10].
(c)purchased hair curlers for his salon since early 2013 (while the salon opened in late 2013, Mr Spowart began purchasing stock in early 2013);[7]
[7] Spowart, [13].
(d)always owned one or two hair curlers since 1999, including the product to which the Prior Art relates (known as the "Rusk Miracurl");[8] and
[8] Spowart, [11]-[13].
(e)sold hair curlers to his clients since about November 2007.[9]
[9] Spowart, [15].
…
From a time before 10 April 2013, being the priority date of the Design (“the Priority Date”) and up to the present day, Mr Spowart also keeps up to date with new hair curling products that are released onto the market.[10]
[10] Spowart [17].
Accordingly, Mr Spowart is sufficiently aware of hair curlers so as to qualify as an "informed user" within the meaning of section 19(4) of the Designs Act, including as at the Priority Date.
Ms Falach
Ms Falach is also sufficiently familiar with hair curlers to qualify as an informed user, including as at the Priority Date. Ms Falach:
(a)has used a variety of hair curlers since entering the hair styling profession in the mid-1980s, including the "Rusk Miracurl" (the product to which the Prior Art relates);[11]
(b)has been responsible for purchasing hair curlers for a variety of salons that she has managed during her career, including her own hair salon and mobile salon service;[12]
(c)has assisted clients with purchasing hair curlers ;[13] and
(d)teaches apprentice hair stylists how to curl hair with hot rollers and straighteners in her role as a lecturer in hairdressing at Polytechnic West.[14]
In addition, Ms Falach has extensive experience with hair straighteners, which, it is submitted, are similar to the product to which the Design relates.[15]
From a time before the Priority Date and up to the present day, Ms Falach also stays informed of new developments with hair curling products.[16]
[11] Falach, [18]-[23], [29].
[12] Falach, [6], [7], [11], [14], [15] and [24].
[13] Falach, [29].
[14] Falach, [1], [16].
[15] Designs Act 2003 (Cth), s 19(4).
[16] Falach [25].
I have no reason to question the above claims made in the Spowart and Falach declarations. I accept that Spowart is an informed user. Whilst I note that Falach is a lecturer in hairdressing and had been so for many years before the Priority Date I also accept her to be an informed user.
S. 19(2)(b) The SOND
The Owner’s submission was that:
As the [SOND] does not refer to any specific visual features of the Design, the Design in its entirety must be considered when determining the question of distinctiveness. This is consistent with the witnesses’ views on the Statement.[17]
[17] Spowart Declaration, [29]; Falach, [32].
I am not wholly in agreement with those statements. If is true that if there was no SOND then section 19(3) requires the informed user to have regard to the appearance of the Design as a whole. Here, we have a SOND which claims distinctiveness in the features of shape and/or configuration as shown in the representations. So far as it might make any difference, it follows that features of pattern and/or ornamentation were not claimed by the Owner to be new and distinctive. It further follows that if the design has features of pattern and/or ornamentation then those features would be afforded less attention in weighing the section 19 factors than any features of shape and/or configuration.
S. 19(2)(a) State of development of the prior art base for the design
The Owner states that both declarants were “unaware of any other hair curler which had a barrel disposed perpendicularly to the handle at the Priority Date.”[18]
[18] Spowart [28]; Falach [22].
S. 19(2)(c) Part of the Design substantially similar to the Prior Design
The Owner submitted that:
While Mr Spowart considered that the cord swivels of the Design and the Prior Art are substantially similar, the cord swivels contribute only approximately 10% of his overall impression of the two designs. As a result, the substantial similarity of the cord swivels does not cause Mr Spowart to view the Design and Prior Art as being substantially similar in overall impression.[19] The substantial similarity of this minor element of the designs should accordingly be ascribed correspondingly very little weight when determining whether the Design is distinctive compared with the Prior Art.
In that regard, the witnesses do not consider any other aspects of the Design to be substantially similar to the Prior Art.[20]
[19] Spowart, [45].
[20] Falach [33].
S. 19(2)(d) Freedom to innovate
The Owner’s submissions are that:
The Designs Examiners’ Manual of Practice and Procedure (“the Manual”) states the following in relation to freedom to innovate:
"the more limited the freedom of the designer is in developing his design due to technical or marketing constraints (standardization, mechanical or physical constraints, necessity of taking into account deep-rooted marketing requirements by the clients, features imposed by fashion), the more weight has to be given to small differences or variations as constituting an independent development."[21]
[21] Designs Examiners’ Manual of Practice and Procedure, [D09.4.5.1], citing the 1991 EC Green Paper The Legal Protection of Industrial Designs, [5.5.8.3.].
The Manual also sets out the following guiding principles in relation to design constraints caused by fashion:
"In some industries the marketability of products is strongly dependant [sic] upon fashion. That is, while a range of products might satisfy a technical requirement for a product, issues of fashion dictate the presence of certain features if the product is going to be marketable…
For the 'fashion' criterion to be established, it needs to be demonstrated that the fashion need is such that, without the presence of the relevant features, there would be very little user demand for the product as a result of them being 'unfashionable'."[22][22] Designs Examiners’ Manual of Practice and Procedure, [D09.4.5.2].
The evidence establishes that the Design and the Prior Art must have:
(a)a barrel casing that encloses the circular barrel to accommodate the hair;[23]
[23] Spowart [33]; Falach [34].
(b)an arm;[24] and
[24] Spowart [42]; Falach [34].
(c)a cord.[25]
[25] Falach, [35], Spowart, [44].
Mr Spowart opines that, while the barrel casing may, in theory, be any shape provided that it has a circular chamber to accommodate the hair as it wraps around the barrel, for the following practical and marketing reasons, the barrel casing must have a rounded shape:
(a)the barrel casing needs to have enough room for the circular chamber, meaning the diameter of the barrel casing needs to be larger than the width of the arm;
(b)if the overall shape of the barrel casing is not a broadly round shape, it will take up additional space, making the curler heavier, larger, more unwieldly and harder to use and store; and
(c)a non-rounded barrel casing would look "silly", and potentially dissuade him and others from purchasing the product.[26]
Both witnesses state that it is important for their equipment to look stylish and modern, and be aesthetically pleasing.[27]
In light of the above considerations, the role that fashion plays in the marketability of the hair curler the subject of the Design dictates that the barrel casing must be rounded, and thus is a relevant consideration to the "freedom to innovate" aspect of the distinctiveness enquiry.
[26] Spowart [36]-[38].
[27] Spowart, [38]; Falach, [27], [53]-[55].
S. 19(1) generally
Neither Spowart nor Falach consider that the Design is substantially similar in overall impression to the Prior Design. They describe the Design in terms such as modern, stylish, sleek, ergonomic, or less bulky and the Prior Design as more heavy duty, more industrial, more functional, chunkier, old fashioned (like a design from the 1980s) and less pretty than the Design.
Both informed users ascribe functional significance to visual features of the Design and the Prior Design. The Owner submits that “where a visual feature has a perceived functional (and/or aesthetic) significance in the eyes of the informed user, that feature will have an important bearing on the informed user’s overall impression of the Design and the Prior Art.”
Reasoning
Under section 65(2) of the Act 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.
For the purposes of section 19, I have already found Spowart and Falach to be informed users. That finding does not commit me to slavish acceptance of all of their statements[28] and the declarations have areas of concern to me. The declarations are not made in identical terms or nearly identical terms. Nonetheless there are matters in common and again I have found it convenient for follow Spowart’s declaration, noting where appropriate comments made by Falach.
[28] Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) FCR 323, 332 [47].
I note, first, that Stowart states: “Wrays [the Owner’s representatives] asked me whether there are any factors that I would typically take into account when purchasing a new hair curler.” Falach indicates that she was asked to respond to the same question.
I would suggest that this was a misdirection by the Owner’s representatives which should not have influenced either declarant. So, for example, Stowart states in response that “my primary concern is their [hair curler’s] functionality”. He then lists as examples thereof (i) their quality (ii) their power (iii) whether they are multi-functional or not and (iv) their ease of use.
I observe that those examples are not limited to section 19 factors, nor are they all relevant to the comparison between the designs. For that matter, they are not all clearly examples of functionality.
Secondly, as to the significance of the SOND, both Stowart and Falach make the same error as the Owner’s representatives (presumably under direction from them) and state that they have assessed the Design having regard to all of its features when comparing it with the Prior Design.
Again, this misapplication of the law has resulted in observations by both declarants on matters of perceived difference between the designs which appear to be pattern or ornament rather than shape or configuration, for example, Stowart’s comments about a target design on the barrel casing and Falach’s comments about a grip pattern.
Thirdly, asked by the Owner’s representatives whether or not Stowart recognized the Prior Design, he replied only that it “looks similar to the ‘Miracurl’, a hair curler from Rusk that I purchased in late 2013”. Later, when asked about his knowledge of the state of the prior art generally, Stowart stated that to the best of his knowledge ‘Miracurl’ was the only product on the market [at the Priority Date] that “sucked hair into a barrel casing and that had a barrel perpendicular to the arm.”
I note that a representation of the ‘Miracurl’ curler is not anywhere in evidence. All I am told is that its barrel is disposed perpendicularly to its arm. So there is no image of that product nor unequivocal evidence when that product was first put on the market or make known. I note that Falach used that same curler and is no clearer about its publication date.
In short, there is nothing to tell me conclusively whether the ‘Miracurl’ curler formed part of the prior art or not.
Further, neither declarant was seemingly aware of, or had ever used, a curler according to the Prior Design (also made and sold by the Owner).
In the result, I have treated the declarants’ evidence of the prior art base with considerable caution.
With those reservations expressed, I can turn to what assists me in the declarants’ evidence. Foremost, Stowart characterizes the barrel casing as the most important part of the design because it is where the hair is curled. He goes on to state that “the barrel casing is also unique to the Design compared with other curlers that were on the market at the Priority Date. In comparison, most other curlers have a swivel cord and an arm. As a result, my eye is drawn to the barrel casing more than to the other components of the Design.”
Asked to describe the components of the Design he identified (a) a barrel casing, (b) an arm and (c) a swivel cord. Notably, he accorded those components 70%, 30% and 10%, respectively, in terms of the “overall impression of the design.” Likewise, Falach identified the barrel casing as the major component of the Design.
Further, when asked the same of the Prior Design, Stowart identified the same three components and gave them the same 70%, 30% and 10% weighting, respectively.
Furthermore, in making that assessment Stowart explicitly states that the barrel casing is also the most visually significant part of both designs and Falack implies that to be the case.
What then follows in the declarations are a number of inaccuracies or conclusory statements not made more credible by my acceptance of the declarants as informed users.
For example, Stowart explains that in order to curl hair, the curler needs to have a barrel (a cylindrical heating element) that the hair winds around. In the case of the designs at issue, both have a barrel casing and Stowart states that it is the shape of that casing which primarily distinguishes the one from the other.
Stowart states that the casings differ because one is oval and the other round, one is smaller, and one is tapered more. Falack agrees that one casing is round and one oval shaped.
In my observation neither declarant is correct in so far as both barrel casings are oval shaped. One is smaller and is more oval shaped than the other but the differences are de minimis in my assessment.
Further, albeit that neither declarant is clear about the state of the prior art in curlers with perpendicularly disposed curling barrels at the Priority Date, both allude to many kinds of hair curling products which do not require a “barrel” in the sense of that shown in either of the designs at issue.
For example, Stowart acknowledges that the external shape of the barrel casing may take any form so long as it can house the barrel but that “for practical and marketing reasons, the barrel casing must have a rounded shape.” To be otherwise, he states, it would be “heavier”, “larger” and “more unwieldly”. Further, “a non-rounded barrel casing on a curler would look silly.”
These are certainly not scientific statements but I question the degree to which they are even supported as “informed” statements.
The Owner’s representative wrote much on the assessment of design features dictated by fashion. Whether or not freedom to innovate is restricted by fashion is a respectable legal question but it is not one addressed by a simple claim that one iteration of a product might “look silly” unless that was manifestly so having regard to the product. There is no evidence of that before me in this case.
Moreover, given modern product materials there is no reason for me to accept the conclusory statements that anything other than a circular or ovoid barrel casing would be heavy or unwieldly.
It follows that there is nothing drawing me irresistibly to Stowart’s conclusion that “the shapes of the barrel casings of the Design and the Prior Art are just about as different as they can reasonably be.”
On the contrary, making my own evaluation, I find the designs remarkably similar in overall appearance.
Application of section 19
I would regard a hair stylist as falling within the class of persons who might be an informed user of this product or class of product.
I have taken account of the evidence of two such persons and have given more weight to similarities between the designs than to differences between them.
I have paid regard to the evidence that, in qualitative terms from both a functional and aesthetic viewpoint, the most significant part of the designs is the shape of the barrel casing.
I have noted the evidence that this casing contributes 70% to the overall visual impression of the designs, by which I understand that in overall impression the casing contributes more than any other area.
I have taken account of the evidence that there is no ostensible difference in the design of the swivel cord.
I am not guided in a clear way by the evidence as to the state of the prior art at the Priority Date as to hair curling devices which incorporate the major visual features of these designs, namely, a barrel casing, an arm and a swivel cord.
What I can deduce for myself is that the evidence appears to show that the Miracurl/Prior Design was the only barrel-style curler known at the time, a factor which weights against the Owner since in an underdeveloped art base, small differences are less likely to make a new design distinctive.
I take note of the evidence that at the Priority Date other forms of hair curling devices were known and published.
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 Design.
Decision
I am satisfied that a ground of revocation has been made out. On my assessment, an informed user at the priority date would regard the Design as lacking distinctiveness in overall impression when compared to the Prior Design, taking into account the factors on section 19.
The provisions of section 68 now apply. I direct that Registration No. 351553 be revoked one month from the date of this decision. If the Registrar is served with a notice of appeal from this decision before that time, I direct that revocation shall not occur until either the appeal is discontinued or, in the event of a decision by the court, if revocation is contrary to any court order.
Debrett Lyons
Hearing Officer
Designs Hearings
15 January 2016
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