Colgate-Palmolive Company - [2011] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS,
WITH REASONS
Re:Design Registration Nos. 323015 in the name of Colgate-Palmolive Company Inc.

Delegate: T. E. Williams

Representation: Owner : written submissions by Tracey Webb of F.B. Rice & Co.

Decision: 2011 ADO 1
Design found to be new and distinctive. Examination completed and s. 67 Certificate of Examination to be issued.
Background

Colgate-Palmolive Company (“the Owner”) filed design application 13749/2008 , claiming a priority date of 15 February 2008. This resulted in design registration 323015 (“the Registered Design”). The product to which the Registered Design relates is described as "Set of bristles for a toothbrush". The application was accompanied by a request for examination of the design after registration. The representations shown as figures 1, 2 and 5 in the Register of Designs show the significant features of the Registered Design to be as follows:
Section 65(2)(a) of the Designs Act 2003 (“the Act”) 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.
A first examination report issued objecting that the Registered Design was not new or distinctive because it was substantially similar in overall impression to a number of designs in the prior art base. The Examiner cited the following prior art, all belonging to the Owner and of earlier priority date:

Reference[1]

D1 OHIM-000105655-0018

D2 OHIM-000230107-0009

D3 OHIM-000230107-0001
[1] From the database of designs registered with OHIM (The Office of Harmonization for the Internal Market).

In a later report following submissions from the Owner, the examiner maintained that the Registered Design was not new and distinctive over, in particular, D2, which is closest in overall appearance to the Registered Design. Relevantly, D2 shows black-and-white representations of a toothbrush with a handle apparently identical to the Registered Design, and a head with the salient features shown below
The Owner thereupon asked to be heard but, in view of that which I will set out below, no hearing has been necessary.
Earlier decision
Hearing Officer Lyons has already dealt with the distinctiveness of two other of Colgate’s registrations, 320882 and 320884 (“the other registrations” or “the Designs”), deciding that a certificate of examination should issue. The other registrations are simply halftone renditions, with some portions shown in dotted lines, of a toothbrush with a head that would potentially constitute the head of the toothbrush shown, in colour, in the Registered Design. Mr Lyons found that the Designs were distinctive in the face of cited OHIM designs that included D2.
In the present matter, the Registered Design includes the handle of the toothbrush where, in the matters with which Mr Lyons was concerned, the handles were shown by dotted representation only. His reasoning is not binding upon me, but I find his approach is, with the necessary modification, applicable to the present matter.
Having noted the legislative framework, Hearing Officer Lyons made…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Colgate-Palmolive Company [2011] ADO 1
Case: [2011] ADO 1
Decision Date: 3 February 2011

CaseChat Overview and Summary

The decision under review involved a dispute over the novelty and distinctiveness of a design registration held by Colgate-Palmolive Company Inc. The design in question related to a set of bristles for a toothbrush and was registered under the Designs Act 2003. The dispute arose when the examiner objected to the registration on the grounds that the design was neither new nor distinctive compared to prior art designs. The examiner cited several prior designs, including D2, which was closest in overall appearance to the design in question. The Owner challenged the examiner’s decision, prompting a review by a Hearing Officer.

The legal issues before the court involved the interpretation of sections 15(1) and 65(2)(a) of the Designs Act 2003. The Owner had to demonstrate that the design was new and distinctive compared to the prior art base. This involved establishing that the design was not substantially similar to prior designs in terms of overall impression. The key consideration was whether an informed user would perceive the design as being sufficiently different from prior designs.

The court considered the previous decision made by Hearing Officer Lyons in relation to other registrations held by the Owner. The court adopted a similar approach to defining the informed user, which was neither a toothbrush designer nor a member of the general public, but rather someone with a particular interest in the design of toothbrushes, such as dental professionals or consumers with specific dental needs. The court concluded that the differences in the design, particularly the use of colour and the arrangement of the bristles, were sufficient to distinguish the design from the prior art. The court noted that the visual appearance of the handle was less important than the head of the toothbrush in determining overall distinctiveness.

The court decided that the Owner had successfully demonstrated that the design was both new and distinctive compared to the prior art. The design, when viewed by an informed user, would not be regarded as substantially similar to the prior art in overall impression. The court directed that examination of the design be completed and that a certificate of examination be issued to the Owner.

The final orders of the court were that the design registration No. 323015 in the name of Colgate-Palmolive Company Inc. be found to be new and distinctive, that the examination of the design be taken as completed, and that a certificate of examination be issued in relation to the registration.

Orders