BFX HO Pty Ltd
[2012] ADO 1
•18 September 2012
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.
| Delegate: | Debrett Lyons |
| Representation: | Owner: Glen McGowan of Counsel, instructed by Cullens, Patent & Trade Mark Attorneys |
| Decision: | 2012 ADO 1 |
Overview
Moorevann Pty Ltd (‘Applicant’) filed an application under the Designs Act 2003 (‘Act’) on 1 May 2009 (‘Priority Date’) to register the design shown in the representations in Schedule 1 (‘Design’) in relation to a product described as “Smartable Mechanism – Adjustable Height Leg with spring-loaded push button for steel framed tables” (‘Product’).
The application carried a statement of newness and distinctiveness (‘SOND’) which read:
“Adjustable height leg combined with spring-loaded, heavy duty stainless steel pin, enabling various height adjustments in steel frame tables”.
The application was determined to have met minimum filing requirements.
The application was subject to a formalities check which resulted in a minor amendment of the application after which the Design was registered (‘Registration’).
Immediately following, a request was made to assign the Registration to BFX HO Pty Ltd (‘Owner’). At the same time a request was received for examination of the Registration under section 63 of the Act.
The Registration was subsequently examined and found to be new and distinctive. A Certificate of Examination issued.
Sebel Furniture Pty Ltd (‘Requestor’) sought re-examination of the Registration.
The Registration was re-examined and found to be new and distinctive.
The Requestor asked to be heard in relation to that determination.
10. Acting as a delegate of the Registrar, I took a hearing in Canberra on 3 February 2012. The Owner was represented by Glen McGowan of Counsel, instructed by Cullens, Patent and Trade Mark Attorneys. The Requestor was represented by Fraser Old of Fraser Old & Sohn, Patent and Trade Mark Attorneys.
11. Following the hearing, on 8 February 2012, the attorneys for the Owner wrote to me stating:
One matter which was only addressed in passing at the hearing was what should happen if you believe that there are defects with the registered design which may be a ground for its revocation.
If that is the case, pursuant to section 68(4)(b), it is our opinion that the appropriate action would be to issue a further examination report to provide us with an opportunity to amend the registered design to remove a ground for revocation. Please let us know if you have a contrary view.
12. After consideration, I determined that this decision this address that request as well as the parties’ submissions.
Submissions
13. Mr. Old provided a written outline of the Requestor’s submissions. The outline argument is as follows:
Section 19(2)(b) allows a design applicant to include a Statement of Newness and Distinctiveness identifying particular visual features of the design. Section 7(3)(b) specifies that the materials used in the product are not visual features of a product. Accordingly, the Statement of Newness and Distinctiveness in respect of the present registration does not comply with Section 7. Therefore the registration as a whole is not registrable and should be revoked.
In addition, the Hearing Officer must construe the design and determine in respect of which product it is registered.
Registration 326,042 was lodged 1 May 2009 and its “Article/Product Name” reads “Smartable Mechanism – Adjustable Height Leg with spring-loaded push button for steel framed tables”. The Statement of Newness and Distinctiveness reads “Adjustable height leg combined with spring-loaded, heavy duty stainless steel pin, enabling various height adjustments in steel frame tables”.
The candidates are “Smartable Mechanism”, a leg and a table. Each has its shortcomings. Taken as a whole, it is submitted that the Article/Product Name and Statement of Newness and Distinctiveness indicate that the registered proprietor is seeking a monopoly, not for a single specific appearance, but for a method or principle of construction.
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.
14. The Owner, for its part, stated that the Registration has been examined having regard to those same arguments and found to be new and distinctive. The Owner submitted that there is no reason to depart from those findings and petitioned me to find that the Registration should be certified. The detail of its submissions is referred to as necessary in the Discussion which follows.
Discussion
15. The Requestor’s submissions attack the validity of the Registration on the bases of (i) alleged inherent flaws in, or the uncertain scope of, the Registration, and (ii) prior publication of designs which allegedly render the Registration not new and distinctive.
16. I have therefore started with a summary of how the Design has been treated by the Office so far.
Filing requirements
17. Section 21(2) of the Act states that an application “must comply with (a) any requirements prescribed by the regulations in relation to representations of designs disclosed in the application; and (b) any other requirements prescribed by the regulations.” The subsection underscores that these are the minimum filing requirements.
18. Paragraph 3.01 of the Designs Regulations 2004 (‘Regulations’) states that for the purposes of section 21(2), each of the following requirements is prescribed:
(a)the application must include information that indicates that what is filed is intended to be a design application;
(b)the application must include information that:
(i)allows the identity of the applicant to be established; and
(ii)allows the applicant to be contacted;
(c) the application must include a representation, or information that appears to be a representation, of each design.
19. I see from the official records that the application for the Design was determined to have met the minimum filing requirements set by section 21 and paragraph 3.01 of the Regulations.
Formalities check
20. The Regulations also provide for a pre-registration formalities check. This is not a substantive examination of the application; instead it is a compliance audit referable to section 39 or 40 of the Act (dependent upon whether the application relates to one design or more than one design) which, in substance, require conformity with, respectively, either Regulation 4.04 or 4.05 set out below in so far as they are relevant:
4.04Formalities check — applications in respect of 1 design only
(1)For paragraph 39 (2) (a) of the Act, the formalities check is confirmation, by the Registrar, that:
(a)the design application is in the approved form; and
(b)the design application meets the requirements of regulation 11.18; and
(c)the design application identifies the product or products in relation to which the design is sought to be registered sufficiently to enable each product to be classified in accordance with the Locarno Agreement; and …
4.05Formalities check — applications in respect of more than 1 design
(1)For paragraph 40 (2) (c) of the Act, the formalities check is confirmation, by the Registrar, that:
(a)the design application is in the approved form; and
(b)the design application meets the requirements of regulation 11.18; and
(c)the design application identifies, for each design, the product or products in relation to which the design is sought to be registered sufficiently to enable each product to be classified in accordance with the Locarno Agreement; and …
Section 41 of the Act states that if the Registrar is not satisfied in the manner described by sections 39 or 40, the Registrar must give written notice to the applicant stating the matters of non-conformity and prescribe a time by which the applicant may request amendment of the application under section 28.
22. I see that the formalities check in this case resulted in a letter to the Applicant asking for amendment of the application to nominate an individual as the designer and not the Applicant company as was indicated on the application form.
23. The Applicant responded and the application was duly amended and registered.
Examination
24. Examination requires the Registrar to consider whether the Registration should be revoked because it does not relate to a “registrable design” which, in turn, requires an assessment of whether the Design is new and distinctive when compared with the prior art base for the Design as it existed before the Priority Date.
25. In this case the Registration has been examined a number of times prior to the hearing. It was first examined at the request of the Owner. During that process a third party involved itself by way of written submissions to the Office including material it regarded as relevant to the examination process.
26. The Office duly considered that material and found the Design to be new and distinctive.
27. The Registration was again examined upon application by the Requestor. That process resulted in three official letters from the Office. The first indicated that following re-examination the Design was found to be new and distinctive and proposed certification.
28. For reasons which do not influence the outcome of this matter, a second examiner made a fresh prior art search and indicated his intention to revoke the Registration. This was not before, in error, a Certificate of Examination was issued to the Owner in consequence of the examination described in the preceding paragraph.
29. The Owner responded to the letter of proposed revocation with written argument after which the third official letter retracted the intention to revoke.
30. At that point the Requestor asked to be heard.
Grounds of revocation
31. The Requestor’s authority derives from section 63(1) of the Act which states that:
63(1)The Registrar must examine a design that has at any time been a registered design if any person requests, or a court orders, that the Registrar examine the design.
32. The request for examination requires the Registrar to consider whether a ground for revocation exists under section 65(2) which reads:
65(2)The following are grounds for revocation of the registration of a design for the purposes of this Part:
(a) the design is not a registrable design;
(b) any other ground prescribed by the regulations.
33. Section 65(2)(b) was not addressed in submissions but for clarity I mention here that Regulation 5.02 sets out the only ground referable to section 65(2)(b) and that ground had no relevance to these proceedings.
Section 65(2)(b) - the prior art base
34. 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.
35. 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.
36. 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 comprising Registered Design No. 137,554 and other (unregistered) design disclosures said to be in the public domain before the Priority Date.
Section 65(2)(b) – other
37. The Requestor’s alternative submissions are less obviously linked to section 65. They are:
the Registration should be revoked because it essentially seeks a monopoly in a method or principle of construction and not in visual features of a product;
the Registration should be revoked because it appertains to more than one design and the scope of the Registration is therefore uncertain;
the Registration should be revoked because it includes references to matter excluded from protection by the Act and the Registration is non-compliant with section 7.
Scope of Examination
38. The first questions which arise are whether these claims that the Registration is somehow inherently flawed and should be revoked find a basis in the legislation and, if so, whether those defects, should they exist, are properly the subject of scrutiny under section 65 examination and constitute reasons for revocation of the Registration.
39. Neither parties’ written or oral submissions gave attention to those questions and so, following the hearing, I wrote to the parties inviting their further comment. Both sides responded.
40. The Requestor wrote:
The use of the term “registrable design” [in section 65(2)(a)] refers the Delegate back to Section 15. Section 15(1) reads “A design is a registrable design if the design is new and distinctive …”. Section 15(1) uses the term “if” and does not use the term “if and only if”. That is to say, in order to be a registrable design … the subject of the design must also pass an inherent threshold test as a design. For example, the subject of the registration must be capable of being construed if it is to be compared with the prior art. In particular, the word “design” in Section 15(1) means that whatever the subject of the registration is, it must comply with the definition of “design” contained in Section 5.
The definition of “design” utilizes the term “product” and this is consistent with Section 8.
… …
At the Hearing, the registered proprietor asserted that the product was a leg. The Hearing Officer invited the registered proprietor to make a conditional alternative submission in this connection but the registered proprietor declined to do so… .
The representations make it clear that the length of the leg is not fixed but is instead adjustable. Consequently, as the product is a leg, the product does not have all of its dimensions fixed, but instead has an indefinite dimension. However, such a product does not meet the definition of the word “product” contained in Section 6(3) where the indefinite dimension applies to products such as aluminium extrusions and the like. For example, the leg does not have a constant cross-section.
… …
In addition, the definition of “design” means the “overall appearance of the product resulting from one or more visual features of the product.” Section 7 defines “visual feature” to include the shape, configuration, pattern and ornamentation of the product.
There is nothing in the registration to refer the person considering the registration to any one or more visual feature. …
Section 19(2) provides that there can be a SOND to identify visual features. But in this case, not only does the SOND not identify any visual features, the SOND does not comply with Section 7. This is because the SOND refers to “the materials used in the product” contrary to Section 7(3)(b).
Again, this lack or absence of visual features means that the subject of the registration cannot be construed as a “design” for this reason also. Again it follows that in the absence of a design, Section 15 has not been complied with on this basis also.
41. The Owner’s response was that, for the purposes of section 65, there is no so-called “inherent threshold test”. It argued that section 65(2)(a) is conditioned solely on section 15 which is limited to requirements of novelty and distinctiveness. It stated that other defects that might prevent a design from being registered are not engaged by section 65(2)(a) and that if the Requestor’s submissions in this regard were correct, section 15 would not be exhaustive of the requirements for a registrable design. It submitted that ran counter to the clear language of the Act.
Reasoning
42. For reasons which emerge, I will examine the Registration from the perspective of the Requestor’s additional objections, leaving to one side the prior art material. Moreover, I will for the moment give the Requestor the benefit of its argument that those objections can be brought within section 65 examination.
Section 8
43. Section 8 states that “In this Act, a reference to a design is a reference to a design in relation to a product.”
44. I confirm that the Owner did submit that the Product was a leg. That submission does not make it so, but it does confirm my own assessment of the product. The product is named as a “Smartable Mechanism – Adjustable Height Leg with spring-loaded push button for steel framed tables”. The SOND reads “Adjustable height leg combined with spring-loaded, heavy duty stainless steel pin, enabling various height adjustments in steel frame tables”. In spite of the Requestor’s submissions that those statements identify three possible products, namely, a “Smartable Mechanism”, a leg or a table, I think that an ordinary syntactical approach makes it fairly clear that the subject of both statements is a leg for a table. The Product is certainly not a table. Nor, to my mind, is the expression “Smartable Mechanism” a term identifying the Product. Rather, I think it is reasonable to assume that it is (or at least the invented word “Smartable” is) a trade mark or brand name which the Owner has adopted for the Product and which has found it way onto the register. Much as it may be unnecessary, I do not think that it obfuscates an understanding that the Product is a leg for a table.
45. Whether or not it properly falls under my purview under section 65, it do not consider on the facts that there is a breach of section 8.
Section 6(3)
46. Section 6 defines a “product” and so far as relevant, states that:
(3)A thing that has one or more indefinite dimensions is only a product for the purposes of this Act if any one or more of the following applies to the thing:
(a)a cross‑section taken across any indefinite dimension is fixed or varies according to a regular pattern;
(b) all the dimensions remain in proportion;
(c) the cross‑sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios;
(d) it has a pattern or ornamentation that repeats itself.
47. The Requestor’s objection is that the length of the leg is not fixed but is instead adjustable and so the Product does not conform with section 6(3) requirements. The Owner responded that section 6(3) is simply not relevant to the Product - whilst the Product is an adjustable length leg, it is not by nature of indefinite dimensions and section 6(3) is not applicable to it.
48. I agree with the Owner. Again, whether or not this objection fell under section 65 review, I do not consider that there is a breach of section 6.
Section 7(3)(b)
49. Section 7 provides, so far as relevant:
Definition of visual feature
(1) In this Act:
visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product.
(2) A visual feature may, but need not, serve a functional purpose.
(3) The following are not visual features of a product:
(a) the feel of the product;
(b) the materials used in the product;
(c) …
50. The Requestor objects that the Design does not result from visual features. It submits that neither the Product name, nor the SOND, identify “particular visual features of the design as new and distinctive” to use the words of section 19(2)(b).
51. I find that objection fails for the reason that a SOND is an optional statement and here the representations of the Product show the design features of a leg.
52. In the result, it is not necessary for me to comment further on the scope of section 65 examination. Ordinarily, I would turn to consider the prior art and to the assessment of newness and distinctiveness but in this case there are further issues which delay those appraisals.
Amendment
53. It will be recalled that following the hearing the Owner asked if it might be given the opportunity to request an amendment to the Registration to address a ground of revocation which might have been found.
54. What I have discerned following the hearing is an issue with the Design representations which create a degree of uncertainty as to how the Design might be interpreted and which pose a hurdle to the application of section 15.
55. 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.
56. 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 make 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.
57. 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.
58. 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.
Decision
59. I have partially examined the Registration and made a decision on those grounds of objection raised by the Requestor based on sections 6, 7 and 8 of the Act. For the reasons given, those objections do not support a ground of revocation.
60. I invite the Owner to seek amendment of the Registration as described herein no later than 19 October, 2012.
61. No final decision is possible and so certification of the Registration can not be ordered. If amendment is proposed and accepted, examination will be completed by way of consideration of the prior art on record said to relate to section 15 of the Act when compared with the amended Registration.
62. If no amendment is proposed, a final decision will be made without further reference to the parties.
63. A decision on costs is deferred.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
18 September 2012
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