Bourjois Limited

[1988] ADO 3

In the Matter of the Designs Act 1906 - and - In the Matter of Application No. 0883/85 in the Name of BOURJOIS LIMITED to Register a Design.

 

DECISION OF AN ASSISTANT REGISTRAR OF DESIGNS:

Background

On 10 April, 1985 Bourjois Limited lodged application for registration of a design applicable to an article entitled "Lipstick".

The Office issued a first regulation 14 notice informing the applicant that the design was not registrable pursuant to section 17 in view of known lipsticks. In response, the applicant sought to amend the Statement of Monopoly to incorporate reference to ornamentation or pattern, and colour, where no such references had-been present.

The last Office notice which issued maintained the stance that the proposed amendment was not allowable under sub-section 22B(1A), and the design was unregistrable, as originally stated, since colour was not a registrable particular under the Designs Act.

The applicant requested to be heard, and the matter came before me in the Melbourne sessions of February 1988. Mr. Peter Nicholls, patent attorney, consultant to Callinans, appeared on behalf of Bourjois Limited.

The Application

The representation accompanying the application is reproduced in full below.

The Statement of Monopoly which accompanied the application reads as follows:

"The design relates to the features of shape or configuration of a LIPSTICK as shown in the accompanying illustrations."

Allowability of Proposed Amendments

At the hearing Mr. Nicholls submitted that through a misunderstanding of the English associates' instructions, the application was accompanied by a statement of monopoly which referred to shape and configuration but omitted mention of the feature which he contends is the salient feature of the design, namely, the two tone aspect of the lipstick. He stated that the two tone aspect was clearly disclosed in the representations as originally lodged because the outer case and the lipstick composition are both "dot shaded", indicating that the contents have the same tone as the outer casing, thus tonally contrasting with the inner casing which is not shaded.

Whereas the original statement of monopoly refers to "features or shape or configuration as shown", the statement proposed during the course of examination reads as follows:

"The design relates to the features or ornamentation or pattern of a LIPSTICK of colour related to an outer casing therefor and contrasted to that of the inner section of the casing, as shown in the accompanying illustration."

I pointed out to Mr. Nicholls that some matters included by the expression "colour related ..." were certainly not originally disclosed, e.g. related colours may be colours that are related by relativity of wavelength such as varying shades of red or may be matching colours, in the fashion sense. on the other hand, the representations as lodged show, by means of dot shading, that the lipstick and outer casing have the same tonal consistency.

Mr. Nicholls went on to recognise the problems with the proposed statement and suggested a further proposed statement, reading as follows:

"Monopoly is claimed in the pattern or ornamentation of a LIPSTICK derived from the tonal consistency between the lipstick composition and the outer casing as shown in the accompanying representations."

This statement, he said, makes it clear that colour plays no part in the design, rather it is "tonal consistency" which is the important feature. Furthermore, despite the change in focus of the statement, the scope of monopoly sought is clearly defined by the drawings as originally lodged and since the proposed statement comes within the ambit of these representations, the amendment is allowable under the Act. He also expressed the view that no statement of monopoly, at the application stage, can be said to limit the scope of the design application, and that the limits are found in the actual representations which, for the purposes of the scope of the design, override whatever is said in the statement of monopoly.

Further, he suggested that, on the basis of the definition of Statement of Monopoly in the Act, as the original statement of monopoly made no exclusion of pattern or ornamentation in the lipstick, it followed that the features of pattern and ornamentation shown in the representations were intended to be regarded in the determination of the extent of the original monopoly protection. Thus an amendment changing the focus of the statement of monopoly from shape and configuration to pattern and ornamentation is an allowable amendment. To support this particular submission, Mr.Nicholls referred me to K.K. Suwa Seikosha's Design Application [1982] RPC 166.

Section 22B of the Act reads (in part) as follows:

"22B.(l) The Registrar may, on request made to him in the prescribed manner, amend an application for registration of a design lodged under this Act.

(1A) An amendment under sub-section (1) shall not be made if, as a result of the amendment, the scope of the application for registration would be increased by the inclusion of matter that was not in substance disclosed in the application for registration as lodged.

(3) In this section

"amend", in relation to a representation of an article to which a design is applied, includes the substitution of one representation for another representation; "application for registration of a design" includes the representations of the article to which the design concerned is applied and any statement of monopoly or statement of novelty in respect of the design."

I note in particular that in determining whether or not an amendment shall be made, I can have regard to the representations of the article to which the design is to be applied, as forming part of the application for registration which it is sought to amend. As to the exercise of judgement in this matter, I am aware of the comments by Smithers J. in Chris Ford Enterprises Pty. Ltd. v. B.H. & J.R. Badenhop Pty. Ltd. (1985) AIPC (90-214) 36, 188 at page 36, 198 that:

"the restriction found in sec. 22B(1A) is not intended to exclude all amendments which introduce some difference in shape and configuration of the article or some new matter outside that disclosed in the original application. It would seem that it is designed to exclude amendments which extend the scope in some fundamental way and make disclosures clearly beyond those already made. It may be noted that the terms of sec. 22B(l) and 22B(3) constitute precise positive statutory permission whereas the terms of sec. 22B(1A) are in a sense imprecise and call for the exercise of judgment. Reading the sections as a whole it is proper to conclude that Parliament intended genuine amendments reasonable in scope should be permissible and that the restrictive provisions of sec. 22B(1A) should be interpreted accordingly."

Consequently, I am satisfied from a consideration of the original representations that the pattern or ornamentation derived from the tonal consistency as recited in the most recently proposed (Proposed at the hearing, and lodged in writing later on the same day) statement of monopoly (set out earlier in this decision) is not new material, and therefore the substitution of that statement for the original one constitutes an allowable amendment.

Registrability

During examination the office cited two lipstick constructions against the present application : one is illustrated in "Modern Packaging Encyclopedia 1970", published by McGraw Hill Inc., July 1970, volume 32 number 7A, section 2 at page 44, the other is a lipstick made by Rimmell in England, and being in the personal possession of the examiner well before the priority date of the application.

Mr. Nicholls did not deny that in shape and configuration the design in suit differs inconsequentially from the prior lipstick designs. In fact, the nature of his most recently proposed statement of monopoly referring to pattern or ornamentation ... derived from the tonal consistency constitutes an implicit concession that this is so. In any case, Mr. Nicholls did submit that the proposed amended statement of monopoly would remove the grounds of objection that the Bourjois design is not new or original, and in support he referred me to the judgement in P. Ferrero and C.S.pA's Application (1978) RPC 473.

Put briefly, the question to be decided is whether a lipstick design, differing from prior lipstick designs substantially only in the "pattern or ornamentation" evident in the tonal consistency between the lipstick composition and the outer casing of the lipstick, is new or original in terms of section 17 of the Act. The Ferrero case (supra) on which Mr. Nicholls appears to rely concerned an application to register a design for a chocolate egg, in which the alleged novelty resided in the inner and outer layers being in contrasting shades or colours, the specific example being a commonly shaped egg with a chocolate coloured exterior and a white layer on the interior. The UK Office refused registration on the ground that the features for which novelty was claimed could only be seen when the "article" was broken, at which time it would no longer be a finished article within the meaning of the Act. On appeal, Whitford J. took the view that the application for registration should be allowed to proceed as the Act required only that the features claimed should be features in the finished article, there being no requirement that the features should be judged at the time when an article is bought.

Mr. Nicholls suggests that this case supports his view that the tonal contrasts in the present application beget novelty; to my way of thinking it does no such thing, except in an inferential manner. Thus the question of novelty was not before the judge, although it did seem that the UK Office considered that the chocolate egg design would have been novel if the tonal contrasts of the chocolate layers has been visible in an unbroken egg. In Smith, Kline and French Laboratories Limited's Design Application (1974) RPC 253 Graham J. had requested the UK Office to supply a statement of practice on dealing with design applications where colour was involved. That statement appears as an annexure at the end of the judgement. Graham J. did not disagree with anything in that statement, and I reproduce relevant portions thereof here:

"1. General

The Office practice concerning the part played by colour in design registration is based on the understanding that on the reported authorities, whilst colour may form an element in a design, colour or colouring as such does not constitute design: i.e. that, unless the change of colour creates a new pattern or ornament, registration will be refused.

...........

6. Anticipations

When making a search among prior registered designs and/or trade publications, etc., in order to test the novelty of a design, circumstances may arise where the design which is the subject of the search differs from a prior published or registered design only in the matter of tonal variation (in the case of monochrome representations) or colour variation (in the case of coloured representations or specimens) of certain elements forming the pattern or ornament.

If the novelty claim relating to the design being searched is for the shape or configuration of the article, that shape or configuration would therefore be anticipated and an objection for registration would be raised against the application accordingly.

Again, if the novelty claim relating to the design being searched is for the pattern or ornament of the article or for the shape or configuration and pattern or ornament of the article and in the opinion of the Office no new pattern or ornament has been created, i.e. the differences in the pattern or ornament resulting from the alteration of the colours forming that pattern or ornament are not substantial, an objection to registration would be raised against the application accordingly.

7. Conclusion

It is difficult, if not impossible, to lay down hard and fast rules as to the degree of difference which alteration of colour or colours within a pattern or ornament may impart to a design and each application must be judged on its merits. For example, the degree of difference may to some extent depend upon the comparative simplicity or complexity of the designs being considered. However, it may be said that, generally speaking, alteration of colour or colours in a design which is in other respects not substantially different from a prior design would be regarded by the Office as being in the nature of a variant commonly known in the trade and would not in itself impart the substantial novelty necessary to substantiate a valid registration."

The foregoing statements also comprise the practice of the Australian Designs Office respecting the question of colour. In his judgement, Graham J. went on to state:

"...... Now, if in fact a design were conceived along such lines so that the colour it embodied clearly had a very decisive effect in the impression made upon the eye of the observer, it would, it seems to me, be entirely reasonable and proper to consider the colours as being an essential feature of the design and as contributing to its registrability . .....

..... The true view of the place of colour in designs is illustrated by the above examples and has, in my judgment, already been positively expressed by Farwell, J. in Calder Vale Manufacturing Co. and Lappet Manufacturing Co., (1935) 52 RPC 117 in the passages quoted on page 5 of Mr. Miller's decision and at page 120 and 125 of the Reports of Patent Cases. In summary, the effect of this decision is that colour cannot be ignored, though normally differences in colour are unlikely to be important. Colour may or may not make a material difference, depending upon the circumstances and nature of the design in question. I endorse and respectfully follow the reasoning of Farwell, J. in this common-sense approach to the matter."

The application in suit includes representations of a lipstick wherein the lipstick composition and the outer casing are depicted as a (single) shade of grey by means of "dot-shading". This contrasts with the rest of the lipstick which appears merely as white. The statement of monopoly refers to the "tonal consistency between the lipstick composition and the outer casing as shown ..."

Websters Dictionary (published 1976) defines "tonal" as "of or relating to tone...", and "tone" (inter alia) as:

"colour quality or value : a tint or shade of colour : a modification of a chromatic or achromatic colour with respect to lightness or saturation : ... etc."

What this means in short is that in the lipstick design applied for, the lipstick composition and the outer casing should present to the eye substantially the same "colour" appearance. THAT IS, whether of a wavelength producing a specific colour such as a red, or whether in monochrome, obviously the reflectivity of those portions of the lipstick would affect that appearance, e.g. whether "bright" or "dull" surfaces are involved.

Earlier in this decision I have noted a submission by Mr. Nicholls about allowability of amendments, in which he pointed out that, irrespective of the statement of monopoly, the scope of monopoly sought is clearly defined in the drawings of the representations accompanying the application. I agree : but those drawings show only a prior art lipstick in shape and configuration, having consistent tonal appearance between the lipstick composition and the outer case. That is to say, despite the reference in the most recently proposed statement of monopoly to pattern or ornamentation, there is no pattern or ornamentation as such. Thus in the article to which the design is to be applied, that which is alleged to be a "pattern or ornamentation" comprises a consistent tonality in appearance between two whole sub-units of the lipstick, i.e. the lipstick composition and the outer case. There is no actual pattern or ornamentation marked on those sub-units, and it seems to me that the so-called "pattern or ornamentation" would constitute no more than difference in immaterial detail from such articles known before the priority date. In any case, I note that in the Rimmel lipstick cited by the Office, the lipstick composition and the outer casing are both of a maroon-bronze colouring and whilst on close inspection are not tonally identical, certainly appear "tonally consistent" to the eye under casual observation.

Consequently I find that the present application is not for a new or original design in terms of section 17, and I refuse the application.

(J L Roveta)

Assistant Registrar of Designs

28 MAR 1988