Bitzer Kuehlmaschinenbau GmbH

[2015] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Examination of registered designs 348271, 348344, 348345 and 348346 in the name of Bitzer Kuehlmaschinenbau GmbH.

Delegate:	Debrett G. Lyons
Representation:	Byron Bowman of Griffith Hack, Melbourne
Decision:	2015 ADO 1 Section 63 examination: designs found new and distinctive; single view of prior art considered; s 19 considered; standard of the informed user considered; effect of copying on state of the prior art base considered.

Background

1. This matter has come before me because Bitzer Kuehlmaschinenbau GmbH (‘the Owner’) has requested to be heard with respect to the examination of registered designs 348271, 348344, 348345 and 348346 (‘the Designs’).

Legislative framework

Registration

2. Sections 21 to 45 of the Designs Act 2003 (‘the Act’) set out the process by which a design may be registered provided certain formalities are met and if the Registrar is not required to refuse to register the design.[1]

[1] Designs Act 2003 (Cth) ss 39-44

3. The Designs were all registered in May 2013.

Examination

4. The Registrar must examine a registered design if any person or a court orders that the Registrar do so.[2] In doing so, the Registrar is to consider whether the registration of a design should be revoked, either because it is not a registrable design as defined by the Act or because there is another ground prescribed in the regulations.[3] If the Registrar is satisfied that a ground for revocation has been made out, the Registrar must give written notice to that effect to the registered owner of the design.[4]

[2] Designs Act 2003 (Cth) s 63(1)

[3] Designs Act 2003 (Cth) ss 65(1), 65(2)(a).

[4] Designs Act 2003 (Cth) ss 66(1), 66(2).

5. In each of the present matters the examiners were satisfied that a ground for revocation had been made out, and reported accordingly. Representations sufficiently showing each of the Designs, along with the prior art cited in the examiners’ reports (‘the Earlier Designs’) are set out below:

348271 – representations

348271 – prior art

348344 – representations

348344 – prior art

348345 – representations

348345 – prior art

348346 – representations

348346 – prior art

6. The owner requested a hearing, as it was entitled to do under ss 68(3) and 148. I conducted that hearing in Melbourne on 13 November 2014 as a delegate of the Registrar of Designs.

Registrable design

7. A design, in relation to a product,[5] means the overall appearance of the product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation) of the product.[6]

[5] Designs Act 2003 (Cth) s 8.

[6] Designs Act 2003 (Cth) ss 5, 7(1).

8. 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.[7] The priority date of the Designs is 20 December 2013.

[7] Designs Act 2003 (Cth) s 15(1).

9. The prior art base consists of:

(a)designs publicly used in Australia; and

(b)designs published in a document within or outside Australia; and

(c)designs in relation to which each of the following criteria is satisfied:

(i)the design is disclosed in a design application;

(ii)the design has an earlier priority date than the designated design;

(iii)the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.[8]

[8] Designs Act 2003 (Cth) s 15(2).

10. Section 16(1) 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’. Given that there is at least some apparent difference between the Designs and the Earlier Designs, more relevant for present purposes is s 16(2):

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.

11. Section 19 guides the process to be applied in assessing substantial similarity in overall impression. Under s 19, the Registrar is to give more weight to similarities between designs than to differences between them.[9] The Registrar must also:

·     have regard to the state of development of the prior art base for the design;[10]

·     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;[11] and

·     have regard to the freedom of the creator of the design to innovate.[12]

[9]  Designs Act 2003 (Cth) s 19(1).

[10] Designs Act 2003 (Cth) s 19(2)(a).

[11] Designs Act 2003 (Cth) s 19(2)(c).

[12] Designs Act 2003 (Cth) s 19(2)(d).

12. Section 19(2)(b) provides that:

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

13. The Designs were furnished with a statement of newness and distinctiveness (‘SoND’). The SoND for registered designs 348344, 348345 and 348346 (‘the Colour Designs’) reads:

Newness and distinctiveness resides in the visual features including, shape, configuration and colour of the PRODUCT as shown in the accompanying representations.

The SoND for 348271 is slightly different. It reads:

Newness and distinctiveness resides in the visual features, including shape, configuration and ornamentation of the PRODUCT as shown in the accompanying drawings.

14. The differences in these SoNDs appear to relate to the way their representations were drafted. The Colour Designs are all rendered in green, hence the specific mention of colour. In contrast, the representations for 348271 are black on white line drawings, and the word ‘colour’ is replaced with ‘ornamentation’. The SoNDs for the Colour Designs lack any mention of ornamentation. This appears to be because their use of shading reveals that what may first appear as (two-dimensional) ornamentation in one representation is revealed to be (three-dimensional) shape in others. It is likely that, given its close resemblance to 348345, 348271 does not actually disclose any two-dimensional features, but the SoND was crafted to mention ornamentation in case certain lines were misconstrued as surface decoration.
15. It follows that these SoNDs are unlikely to be of assistance in assessing distinctiveness. This is because they do not confine the question by singling out particular visual features of importance, instead referring to all apparent visual features. They also do not indicate areas of the designs that the owner considers particularly new and distinctive.
16. Section 19(4) provides that in assessing the above factors, I must apply the standard of the informed user. The standard is ‘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’.[13] The standard is worded in terms that are ‘indifferent as to how and in what circumstances familiarity is acquired’, such that the standard can incorporate the views of people that both have and have not used the product (or a similar product).[14]

[13] Designs Act 2003 (Cth) s 19(4).

[14] Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) 214 FCR 323, 337.

17. Submissions from the Owner, as well as material reproduced in the examination search results, show that the product is a piston (aka reciprocating) type refrigeration compressor, with a semi-hermetic housing. I am required to approach the present matter from the viewpoint of a person familiar with this product, or similar products.

Hearing and submissions

18. Prior to the hearing the Owner filed written submissions in relation to the examination of the Designs, and pressed the same points at the hearing. The Owner was represented at the hearing by Byron Bowman, Principal of Griffith Hack, Patent & Trade Mark Attorneys.
19. The submissions vary slightly in relation to each of the designs, but raise essentially the same points. Namely:

a.   The examiners’ reports did not include representations disclosing all angles of the Earlier Designs, merely single perspective views. The examiner has therefore had to infer an overall impression. This is not appropriate since the product does not meet the criteria set out in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (‘Tempo’).[15]

b.   In the alternative, should consideration of the single view of the Earlier Designs be permissible under the Tempo criteria, the Registrar should find the Designs distinctive under s 19 because:

i.The similarities between the Designs and the Earlier Designs are also similarities with other relevant prior art, such that the similarities represent the state of the prior art base and should therefore be given less weight. The Owner also provided what it submits are examples of a competitor’s copies of the Earlier Designs, with evidence that they also form part of the prior art base.

ii.There are several important differences between the prior art and the Designs.

Reasons

[15] (2007) 71 IPR 307.

The Tempo criteria

20. The Owner has raised the issue that the representations of the Earlier Designs do not show those designs from all angles. The Owner submits that a single view is not a reasonable basis on which to infer substantial similarity in overall impression. In support, the Owner has referred to three considerations that Jessup J into account in Tempo took in making such an inference.[16] The submission is reproduced in part below:

The … court … concluded it may be possible to infer an overall visual impression from one side perspective view of a product when:

·     the product is symmetrical;

·     the constraints on the appearance of the “hidden” side are imposed by the view(s) disclosed; and

·     an informed user of the product would expect the “hidden” side to have a similar appearance to the view(s) disclosed.

[16] Ibid 324 [61].

21. The Designs Manual of Practice and Procedure (‘the Manual’) notes that ‘[i]t will frequently be the case that a citation does not expressly display the cited product from all perspectives.’ This is because many publications containing images of designs, such as advertising materials, only show the product from a single angle. IP Office databases also only occasionally show the entire design. As far as I am aware, only the USPTO requires full disclosure of all angles of a design as a prerequisite for registration. Australia certainly does not. If it were the case that all angles of a design in the prior art base were required before it could form the basis of an objection this would severely constrain the ability of the Registrar to conduct effective examination of registered designs. This would in turn mean that many designs that are not new and distinctive would pass examination, against the intention of the Act.
22. The Tempo case offers an example of how the Federal Court avoided this problem. As the Manual puts it:

When it is necessary to infer the impression resulting from hidden perspectives, the considerations include:

·     the expected or actual symmetry of the product;

·     the constraints on the appearance of the ‘hidden’ side imposed by the available views of the product;

·     the appearance that would otherwise be expected of such products;

·     the nature of the features expected to be present on the ‘hidden’ side – there is no basis to infer the existence of an ‘unusual’ visual feature on the ‘hidden’ side of a product.[17]

[17] Designs Manual of Practice and Procedure Part 2, D09.3.2.

23. I observe that the Owner’s submission would seem to see the Tempo case as laying down a rigid set of prerequisites. I am not so sure of that.  The following passage from the Tempo case suggests to me that an inference of substantial similarity is permissible if it has a reasonable basis:

Although shown on the brochure in front perspective view only, the impression obtained from that angle permits the viewer to make a reasonable assessment not only of the side, but also of the front, of the vacuum cleaner [emphasis added].[18]

[18] World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (2007) 71 IPR 307, 324 [61].

24. The examiners’ second reports note that a large proportion of the available images of the Earlier Designs are identical to the corresponding views of the Designs, leading me to infer that the hidden angles of the Earlier Designs would follow suit.  I am drawn to make that inference. All of the Earlier Designs are the Owner’s. Any significant differences between the Designs and the hidden aspects of the Earlier Designs should help defuse the examiners’ objections.  The Owner was in the best position to lead evidence of this, but did not.[19]  Instead, in response to the examiners’ reports the Owner pointed to a number of relatively small differences present in the Designs (that is, as a proportion of that part of the products able to carry features of shape or ornamentation).

[19] Jones v Dunkel (1959) 101 CLR 298.

Effect of copies on the prior art base

25. In short, I am satisfied that the Earlier Designs show sufficient detail against which to assess the distinctiveness of the Designs and I will proceed to do so after dealing with one other preliminary matter. The Owner has included in its written submissions printouts from the websites of a competitor and alleged copyist. They show what the Owner asserts to be copies of each of the Earlier Designs (‘the Internet Designs’). The Owner submits that these ‘have the same design as that represented in the cited publication’ [original emphasis].
26. At the hearing Mr Bowman stated that while they do appear to be identical, he was not certain of this given the quality of the images, but at the very least they would be extremely close. The Owner would have me consider these images as part of the prior art base. The object as I understand it is to reinforce the proposition that a particularly crowded prior art base will give rise to a greater awareness by informed users of smaller design differences, thereby supporting a finding of distinctiveness.
27. Leaving to one side the informal way in which this information was presented to me, the larger question is whether the Internet Designs carry any probative value. I find they do not since they were likely to have been published after the priority date. No evidence or other information is before me to help establish their publication dates and, where a date does appear, it is later than the relevant date.
28. For the sake of completeness, I should add that had there been clear evidence that the Internet Designs were published before the priority date, I would have then had to decide whether they were identical to the Earlier Designs. If they were not identical, they would have formed part of the prior art base. On the other hand, if they were identical, they would not have because an identical copy of a design carries the same visual features in respect of the same product and so necessarily carries the same design as the original. An identical copy could therefore not be considered to have developed the prior art base any further than the original. Moreover, the prior art base does not draw any distinctions based upon who made any particular design.[20]

[20] Designs Act 2003 (Cth) s 15(2).

Section 19 - distinctiveness

The standard of the informed user

29. Mr Bowman, a Patent Attorney with a background in engineering, offered a number of insights into the importance of various differences between the Designs and the Earlier Designs. These are set out later, but for now it is enough to say that his arguments all find their root in some functional aspect of the product.
30. The earlier design cited as prior art against 348346 was found on the Owner’s website, in a March 2012 article titled ‘BITZER ECOLINE series has been extended’. In part, this article reads:

The tried and tested compressor platform has remained the same – which enables the updated BITZER ECOLINE range to completely replace the previous series. There are also no changes in the assembly hole pattern, the suction and discharge line connections and, in almost all cases, the valve position and installation space for the new series, compared to the standard range. The assures universal interchangeability.

This is the sum of information in that article that is in any way descriptive of the visual features of the product. This descriptive passage is written in a reassuring tone, promising minimal change to the ‘platform’ and ‘universal interchangeability’. The rest of the article is dedicated to its applications, performance and to other technical matters. This strikes me as marketing material directed at people already familiar with this product, and so their perspectives would fall within the standard of the informed user.

31. Refrigeration compressors are not typically found on the shelf of a retail store, nor are they likely to be bought for their aesthetic appeal. Their applications are likely to vary significantly, but broadly speaking this type of compressor would find utility only when integrated into some larger machine or system. The semi-hermetic type of compressor differs from its hermetic cousin by the fact that a semi-hermetic compressor may be repaired. The type of people likely to be familiar with this product are therefore engineers and other designers of larger machines into which these compressors are integrated, and people that design, repair or replace these compressors.

Freedom of the creator of the design to innovate

32. It emerges from what I have just explained that the constraints placed on the designer by the market would have been significant. Certainly, the demand for such a product relies heavily on it being universally interchangeable with earlier models, down to the positioning of ‘the assembly hole pattern, the suction and discharge connections … valve position and installation space’. This itself explains many areas of similarity between the Designs and the Earlier Designs.
33. Many of the more striking similarities that contribute to the impression are also inherent to the product itself. The existence of the piston head covers is owed to the fact this is a reciprocating (piston driven) compressor, and that it is semi-hermetic, meaning the pistons must be accessible for servicing via the piston head covers. Their positioning and number directly relates to whether the pistons are aligned in a “V” formation (348271, 348345 & 348346) or inline (348344). The prominent and numerous bolt heads appearing on many of the edges of these designs are required to seal the service covers of a semi-hermetic unit with gaskets. The existence and positioning of the ribs also appear to be mostly dictated by function in that they permit heat exchange via a large surface area in the most efficient area of the product, away from the pistons. The electrical housing sits atop the unit presumably to keep it out of the way of condensation or leakage, and away from the piston covers to permit service access to both the housing and the piston covers.

Prior art base

34. Even when the Internet Designs are excluded from consideration, the prior art base for semi-hermetic compressors is considerable. The examiners’ search results reveal a multitude of shapes and configurations of this type of product. In general, this supports the notion that informed users would have greater awareness of smaller differences.
35. I note that what is missing from almost all of the prior art is a prominent shape shared by the Designs and the Earlier Designs – the octagon. If it were the case that the Earlier Designs’ incorporation of an octagonal shape represented a major departure from the state of the art at the time they came about, this would almost certainly have led to a finding that the Designs were not distinctive. I have not made this finding for two reasons. Firstly, on the evidence before me I simply cannot be sure as to which of the Earlier Designs was published first, or if they were all published at the same time. If the former were the case, this would greatly diminish the strength of any argument that the octagonal shape remains the sudden and significant departure from the state of the art that it might immediately appear to be. Secondly, of the prior art extracted by the examiners, I have discovered one example of a semi-hermetic reciprocating refrigeration compressor that prominently includes an octagonal shape dating back to 24 May 2012. This pre-dates the publication dates offered by the examiners in respect of the Earlier Designs.

Amount, quality and importance

36. The design features highlighted by Mr Bowman differ for each of the Designs and so I have dealt with each under separate headings, with the exception of 348271 and 348345. They will be considered together because, absent the green render, they are identical.

348271 and 348345

37. For these designs, Mr Bowman made the following written submissions:

An informed user of a compressor will be well aware that the design of the piston head cover is important, for example, in terms of operation and maintenance of the compressor. In the case of the present registration, two piston head covers are provided, one on each of the left and right hand sides of the compressor.

The piston head cover of the Bitzer compressor disclosed by the Internet publication has a stepped outer profile comprising two planar surfaces. Fastening bolts are located flushed to each of the planar surfaces and the larger diamond plate of the present design does not form part of the piston head cover of the Bitzer compressor.

Moreover, the piston head covers of the present registration … are characterised by having:

·The piston covers of the registration have a convex outer shape compared to the two tiered flat planar piston covers of the cited publication.

·The piston covers of the registration have a recessed portions about the lower and side edges of the piston head covers for receiving bolts.

·The piston covers of the registration have two diamond shaped plates bolted to an upper edge.

The shape and configuration of the piston head covers of the present registration are therefore clearly different to the shape and configuration of the piston head cover of the cited publication. On account that the shape and form of any piston head cover is important, and the shape of the piston head cover of the cited publication is different to the piston head cover of the present design, we submit that the present design is new and distinctive.

38. Mr Bowman’s submissions at the hearing also reiterated the significance to the eye of an engineer of the shape of the piston head cover.

348344

39. Mr Bowman made the following submissions:

An informed user of a compressor will be well aware that the design of the piston head cover is important, for example, in terms of operation and maintenance of the compressor. In the case of the present registration, two piston head covers are provided, one on each of the left and right hand sides of the compressor.

The piston head cover of the Bitzer compressor disclosed by the Internet publication has flat planar profile, whereas the present registration has a stepped piston head cover including a diamond shaped raised section.

The shape and configuration of the piston head covers of the present registration are therefore clearly different to the shape and configuration of the piston head cover of the cited publication. On account that the shape and form of any piston head cover is important, and the shape of the piston head cover of the cited publication is different to the piston head cover of the present design, we submit that the present design is new and distinctive.

In addition, the body of the compressor of the present registration includes a nose and an additional rib as indicated below. These features are not disclosed by the internet publication.

The below illustrations were also included with the submission:

348346

40. The  submissions were that:

The design of the present registration includes a lifting eye that is centrally located on the body of the compressor such that during lifting, the compressor body will balance under gravity in a horizontal orientation. In contrast, the Bitzer ECOLINE compressor has an eye lifting the compressor that is located at a left hand side of the compressor. During lifting, the Bitzer ECOLINE compressor will therefore be oriented at an inclined orientation.

The present registration includes an enlarged housing for containing electrical components of the present registration. In contrast, the Bitzer ECOLINE compressor of the cited registration comprises a significantly smaller housing compared to the present registration.

The below illustrations were included with those submissions:

Distinctiveness - conclusion

41. Given the constraints on the designer, the considerable art base, the specialised nature of the informed user who typically looks first to function, then only to form with an eye as to whether the compressor will fit the proposed application, I consider the differences Mr Bowman has highlighted sufficient to confer the Designs with the requisite distinctiveness.

Decision

42. I find the Designs to be new and distinctive. Accordingly, examination of registered designs 348271, 348344, 348345 and 348346 is complete and I direct that a certificate of examination issue for each.

Debrett Lyons
Hearing Officer
4 February 2015