BFX HO Pty Ltd
[2013] ADO 3
•5 July 2013
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 326042 in the name of BFX HO Pty Ltd and re-examination thereof (No. 2)
| Delegate: | Debrett Lyons |
| Representation: | Owner: Glen McGowan of Counsel, instructed by Cullens, Patent & Trade Mark Attorneys |
| Decision: | 2013 ADO 3 Costs awarded against Requestor. |
Background
The background to this decision is described in Design Registration No. 326042 in the name of BFX HO Pty Ltd and re-examination thereof [2012] ADO 1.
In brief, BFX HO Pty Ltd (the ‘Owner’) is the owner of Design Reg. No. 326042 (the ‘Registration’) filed 1 May 2009 (the ‘Priority Date’) for a product described as “Smartable Mechanism – Adjustable Height Leg with spring-loaded push button for steel framed tables” (the ‘Product’), carrying a statement of newness and distinctiveness (the ‘SOND’) which reads:
“Adjustable height leg combined with spring-loaded, heavy duty stainless steel pin, enabling various height adjustments in steel frame tables”.
The Registration was examined and found to be new and distinctive. A Certificate of Examination issued. Sebel Furniture Pty Ltd (the ‘Requestor’) sought re-examination of the Registration and later asked to be heard when the Office did not alter its position on the newness and distinctiveness of the Design.
A hearing took place in Canberra on 3 February 2012 at which the Owner was represented by Glen McGowan Q.C. who was instructed by Cullens, Patent and Trade Mark Attorneys. The Requestor was represented by Fraser Old of Fraser Old & Sohn, Patent and Trade Mark Attorneys.
At the hearing, the Requestor argued that the Registration should be revoked on the bases of (i) inherent flaws in, or the uncertain scope of, the Registration, and (ii) prior publication of designs which render the Registration not new and distinctive.
My decision in Design Registration No. 326042 in the name of BFX HO Pty Ltd and re-examination thereof [2012] ADO 1 dealt with the first of those alleged bases for revocation and it is relevant now that I turn to consideration of the prior art and to completion of examination to restate certain findings from my earlier decision.
With reference to section 8 of the Act and to the requirement that a design be a reference to a design in relation to a product, I found having regard (a) to the Owner’s submissions, (b) the product name (“Smartable Mechanism – Adjustable Height Leg with spring-loaded push button for steel framed tables”) and (c) the SOND (“Adjustable height leg combined with spring-loaded, heavy duty stainless steel pin, enabling various height adjustments in steel frame tables”) that the product was a leg for a table.
I also wrote in that decision:
What I have discerned following the hearing is an issue with the Design representations which creates a degree of uncertainty as to how the Design might be interpreted and which poses a hurdle to the application of section 15.
The Design representations consist of two sheets of labeled drawings. In general terms, there are drawings of a leg with and with a roller caster and a view of those legs applied to a table. Additionally, there are views of the steel pin solus and of the inner portion of the leg. Finally, there are views of the reciprocating inner and outer leg portions, shown at two lengths.
Given my finding that the Product is a leg for a table, I am not of the opinion that the drawing which shows the leg(s) applied to a particular table makes the ambit of the Registration any clearer. Nor, given the definition in the Act of a “visual feature”, do I consider it helpful for the Registration to include drawings of the steel pin or inner leg portion, solus. Finally, it is again unclear to me that a leg with a roller caster in place of a foot exemplifies the Design in any way. I find that all those drawings could be usefully deleted.
What would remain then would be three drawings of a leg. Those drawings are not identical. I appreciate the desire to show views of the leg at different “heights” or extended to different lengths, however I am troubled that there is a difference between these remaining drawings, not only in that regard, but also because two drawings show the outer leg as having six adjustment holes and the third drawing shows the outer leg as having five adjustment holes.
I therefore invite the Owner, within the limits described by the Act, to seek amendment of the Registration by way of deletion or replacement of representations. No other amendment is invited.
Afterwards and through several rounds of correspondence with the Office the Owner declined to offer any amendment to the Registration. The last letter from the Office stated that should the Owner decide not to amend the Registration, the Office would take the initiative and identify which of the several designs disclosed by the Registration was to be compared with the prior art.
Discussion
10. The representations of the Registration are shown in Appendix A hereto.
11. The Office letter referred to in paragraph 9 stated in part:
Whilst I note your decision not to voluntarily amend the Register by way of deletion of certain representations, the consequential effect is that I am unable to meaningfully assess the scope of any one design as it presently stands against the prior art.
I have looked once more at the design representations, reading them in all cases as depictions of a leg for a table, but find several designs disclosed, differing in ways such as the inclusion of a caster foot or not, or the number of spring pin locating holes. In particular, the representations consist of 2 sheets labelled 1/2 and 2/2 and I will reference those pages.
Sheet 1/2 shows two different designs of a leg for a table: one with a caster and one with a foot. The drawing entitled “Application to Table View” shows both.
Sheet 2/2 shows according to the “Perspective View” a third design, this time a footed leg but with six spring pin locating holes rather than 5 holes as shown on Sheet 1/2.
I have, for the moment, ignored the additional drawing on Sheet 2/2 described as the “Inner Steel Leg View” and both machinations of the “Stainless Steel Push Button Pin View” as they appear not to be complete representations of a leg for a table.In the result, three designs, not one, are carried by the registration. In other words, I have identified “further designs” within the meaning of Regulation 1.04 and in order for me to continue examination I will require you to either revisit your decision not to delete certain drawings from the registration, or I will amend the Register so that there is one design per register entry.
12. The Requestor’s submissions based upon section 65(2)(a) are that the Registration should be revoked because the design is not distinctive over the prior art. The Requestor’s written submissions in relation to the prior art were that:
The prior art is as set out in the Statutory Declarations of F. P. Old dated 16 July 2010 and 4 February 2011 and Registered Design No. 137,554 which illustrates adjustable telescopic legs of rectangular cross-section. Irrespective of how the product is construed, the [design] representations do not illustrate anything which is distinctive over the prior art of record. Accordingly, the design is not a registrable design in accordance with Section 15 because it is not new and distinctive when compared with the prior art base.
13. Section 15(1) of the Act states that a design is a registrable design if it is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
14. Section 16 of the Act provides that a design is new unless it is identical to a design that forms part of the prior art base for the Design and section 16(2) states that:
A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.
15. The prior art relied upon by the Requestor comprises Registered Design No. 137,554 and other disclosures said to be in the public domain before the Priority Date. The representations of Registration 137,554 are shown in Appendix B. Otherwise, the Requestor relies upon the Statutory Declarations of F. P. Old made on 16 July 2010 and 4 February 2011.
16. The earlier of those declarations states that:
“legs of adjustable length were known in Australia before the priority date of the design in view of, amongst other things, the distribution in Australia by Sebel Furniture Ltd of a brochure entitled Sebel Care the last page of which is dated May 99 and which illustrates ‘Telescopic Legs’. Such legs include a spring loaded stainless steel pin enabling various height adjustments to be made in steel frame furniture.”
17. The later 4 February 2011 declaration is largely argumentative but makes reference to the following material:
· US Patent No. 5,676,068 published on 14 October 1997;
· A 2008 product catalogue from a business by the name of RAECO;
· The product range shown at obtained via the Wayback Machine ( said to be from 30 September 2002; and
· US Patent No. 3,701,506 published 31 October 1972.
18. Before I can further consider those references I must first deal with the Registration which, as it stands, contains multiple designs.
19. Regulation 9.05(1) of the Design Regulations 2004 provides that the Registrar may, of her own motion, amend an entry in the Register to correct a clerical error or an obvious mistake. Regulation 9.05(3) goes on to provide that if the Registrar proposes to amend an entry in the Register, the Registrar may give notice of the proposed amendment to a person who is entered in the Register as having an interest in the design.
20. The Owner is a person entered in the Register having an interest in the Design. The Owner has already been put on notice of the Registrar’s intention to amend the Register entry. As a delegate of the Registrar I have determined that there was an obvious mistake in so far as the applicant indicated that the application for registration contained only one design, when in fact it contained three. There was a further obvious mistake made by the Office in so far as the Office failed to correct the error or seek its amendment before registration. Both of these mistakes are essentially the same error, such that by correcting one, the other is also corrected. In each instance, it is obvious on the face of the Register what the mistake was and how the mistake is to be corrected.
21. Subject to any appeal from this decision or opposition to the amendment under Regulation 9.05(5), it is my intention to correct the Register entry under Regulation 9.05(1) for Registration No. 326042 by deletion of all representations but for (a) the representation on sheet 1/2 showing a leg for a table terminating in a plain foot (rather than caster foot); (b) the representation entitled “Application to Table View”.
22. The representations to be deleted from Register entry 326042 will become separate Register entries, one design per register entry. In particular, there will be an entry for a design according to (a) the representation on sheet 1/2 showing a leg for a table terminating in a caster foot (rather than plain foot); (b) the representation entitled “Application to Table View”. In addition, there will be a Register entry for a design according to (a) the “Perspective View” on Sheet 2/2 which shows a footed leg with six spring pin locating holes (rather than 5 holes as shown elsewhere); (b) the representation entitled “Application to Table View”.
23. I turn then to compare the two representations which will remain as part of the amended registration with the prior art. In doing so I will hereinafter use the defined term, “the Design”, to mean the design as disclosed by those two remaining representations and the term, “the Amended Registration”, to refer to a leg for a table according to the Design.
24. In broad terms the representation entitled “Application to Table View” shows a four legged table where two of the legs bear the Design and the table top is generally circular with a crescent shaped “bite” removed from it.
25. The prior art relied upon by the Requestor does not show anything identical to the Design. The 2008 RAECO catalogue, for example, shows that round tabletops with an arcuate piece removed were known before the Priority Date. Other prior art disclosures point to similar design principles all generally intended to allow two or more such tables to neatly mate with one another to form larger work surfaces. Nevertheless, there is no precise anticipation of the Design.
26. I therefore find that the Design is new within the meaning of section 16.
27. The remaining question of whether or not the Design is distinctive, that is, whether or not it is substantially similar in overall impression to a prior art design, is to be determined having regard to section 19 which provides that:
Factors to be considered in assessing substantial similarity in overall impression
(1)If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(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).
28. I must underscore the importance to my decision of the influence played by subsections 19(2)(a), (b) and (c). In particular, it is not only the Requestor’s evidence, but also the material located by the Examiner, which shows me for the purposes of sections 19(2)(a) and (c) that the prior art is replete with examples of telescopically adjustable legs, many of which use some type of relocatable securing means such as a pin. Further, and for the purposes of section 19(2)(b), the effect of the SOND (and, for that matter, the Product name) are indicative of the level of attention that should be paid to the representation of the leg as applied to the table (“Application to Table View”).
29. The representations of Registration 137,554 in Appendix B show adjustable legs for a table which differ from the Design in two material ways – first, on close examination it can be seen that the inner member of each leg is of a quite different close-sectional shape to the inner member of the leg according to the Design, and secondly, that inner member terminates in a crossbar of such significant proportions that when the legs are used as a pair, they are enough to support a table without the need for third or fourth legs.
30. The Sebel Furniture Ltd brochure shows a chair which, amongst other features, has a set of four legs, telescopically adjustable for seat height. There is no disclosure of application of those legs to a table. There is nothing to support the claim that the legs are secured at various heights by a stainless steel pin albeit that nothing turns on that claim. The principle of operation of the legs of the Sebel chair seems to be the same as shown by the Registration. What is different from the Registration is that the reciprocating telescopic leg members of the Sebel chair legs are round in cross-section.
31. The 2008 RAECO product catalogue shows round top tables with an arcuate “bite” taken out of the tabletop but shows no table leg detail.
32. The product range shown at obtained via the Wayback Machine ( is said to be from 30 September 2002. It shows desks with height adjustable “T-legs” which in overall appearance seem to closely resemble those disclosed by Registration 137,554 so far as can be determined from the poor images.
33. US Patent No. 3,701,506 published 31 October 1972 relates to “An adjustable Furniture Leg” and shows another height adjustable “T-leg” with similar dimensions to Registration 137,554 and to the desk legs once shown at Finally, US Patent No. 5,676,068 published on 14 October 1997 relates to an invention described as “Versatile Tables which Form Expandable Loop Assemblies” and which discloses a variety of tabletop shapes which when coupled like with like are capable of forming larger work surfaces.
35. At the hearing there were no compelling submissions as to who might be the informed user of the Product or similar products and I am content to reach my own finding that such a qualified person might be an office manager, an OHS professional, or a buyer for a school or government department.
36. Applying the standard of a person of one of those classes to the factors set out in section 19 and having particular regard, for the reasons I have already given, to subsections 19(2)(a), (b) and (c), I find that the Design is not substantially similar in overall impression to any of the prior art designs which are considered above.
37. I therefore find that the Design is both new and distinctive.
Decision
38. In summary, my decision in Design Registration No. 326042 in the name of BFX HO Pty Ltd and re-examination thereof [2012] ADO 1 was that the Requestor’s grounds of objection based on sections 6, 7 and 8 of the Act did not support a ground of revocation.
39. My decision in this matter, which now completes examination, is that the Design is new and distinctive.
40. I rely on Regulation 9.05 to direct amendment of the Register to correct an obvious mistake in the original registration.
41. I order that a Certificate of Examination issue in respect of the Amended Registration.
42. I decide that there will be no further examination of the two additional Register entries made under Regulation 9.05 until such time as a request might be made for same.
Costs
43. I award costs against the Requestor.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
5 July 2013
Appendix “A”
Appendix “B”
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