Colgate-Palmolive Company Inc.

[2010] ADO 2

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Design Registration Nos. 320882 and 320884 in the name of Colgate-Palmolive Company Inc. – and – examination thereof.

Delegate:

Debrett Lyons

Representation:

Owner :   Tracey Webb of F.B. Rice & Co.

Decision:

2010 ADO 2

Designs 320882 and 320884 found to be new and distinctive. Examination completed and s. 67 Certificate of Examination to be issued.

Background

1.     Colgate-Palmolive Company (“Owner”) filed design application Nos. 13643/2008 and 13645/2008 (“Designs”) on 31 July 2008, claiming a priority date of 15 February 2008 for both.

2.     The product to which the Designs are applied is described as "Set of bristles for a toothbrush". 

3.     The applications were accompanied by a request for examination of the Designs.

4. The Designs were registered and then examined. Section 65(2)(a) of the Designs Act 2003 (“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.

5.     Newness and distinctiveness are separate requirements.  A first examination report issued objecting that the Designs were not new or distinctive because they were substantially similar in overall impression to a number of designs in the prior art base.  In particular, the Examiner cited the following prior art, all belonging to the Owner:

Reference	Owner	Publication Date
D1	US patent 7,089,621	Colgate Palmolive Company	15 August 2006
D2	OHIM-000230107-0001	Colgate Palmolive Company	28 December 2004
D3	OHIM-000230107-0005	Colgate Palmolive Company	28 December 2004
D4	OHIM-000230107-0006	Colgate Palmolive Company	28 December 2004
D5	OHIM-000230107-0009	Colgate Palmolive Company	28 December 2004

6.     In later reports following submissions from the Owner the examiner conceded the newness of the Designs but continued to uphold the claim that the Designs were not distinctive over the prior art.

7.     The Owner asked to be heard and the matter came before me, Debrett Lyons, a delegate of the Registrar of Designs in Melbourne on November 2009.  The Owner was represented by Ms. Tracey Webb of F.B. Rice & Co.

Legislative provisions

8. Section 16(2) of the Act 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 (see section 19)".

9.     Section 19(1) states that "[I]f 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."

10.   In turn, section 19(2) sets out the factors to be considered in assessing substantial similarity in overall impression, as follows:

19(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)

11. Section 8 of the Act then states that “a reference to a design is a reference to a design in relation to a product”.

12.   Section 6(1) defines a “product” as “a thing that is manufactured or hand made is a product” and section 6(2) goes on to state that “[A] component part of a complex product may be a product for the purposes of this Act, if it is made separately from the product.”

13. Finally, the definition section of the Act, section 5, states that a “complex product means a product comprising at least 2 replaceable component parts permitting disassembly and re assembly of the product” and also that a “design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.”

Design representations

14.   Shown below are the side view representations of the Designs, chosen for inclusion here because they most obviously show the key visual features of the Designs.

320882  320884

Reasoning

15.   The first issue arising is something which was not ventilated at the hearing and was not the subject of written submissions.  The product to which the Designs are applied is stated to be a set of bristles for a toothbrush.  The Designs Examiners' Manual of Practice and Procedure at paragraph D04.3.4 refers to the definition of a “complex product” in section 5 of the Act ( a product comprising at least 2 replaceable component parts permitting disassembly and re-assembly) and states that:

In assessing whether a product is a unitary product, or a complex product, regard should be had to the structure of the product. The mere fact that a product is made of numerous components does not make it a complex product. A product is a complex product only to the extent that it permits disassembly and reassembly. For example, a product where components are held together by way of screws is inherently a complex product – as the component parts can be disassembled and reassembled. In contrast, a tyre tread is an inherent part of a tyre that is not capable of disassembly – even in the context of tyre retreads.

…   …

Where the components are held together in a manner that prevents physical separation – such as by being welded, riveted or glued – prima facie the product does not contain parts that permit disassembly/re-assembly. Where an owner wants to argue that the component parts are replaceable even though they are welded, riveted or glued (for example), the owner will need to demonstrate that the product is capable of being disassembled/re-assembled – for example, by showing the commercial availability of component parts for replacement purposes, or a declaration from a repairer or other relevantly qualified person.

16.   There was no evidence led as to whether or not a toothbrush is a complex product.  In my observation it is not.  Accordingly, the Designs carry a misdescription of the product, which should have been “Toothbrush”. 

17.   Section 66 allows post registration amendment of a registration, but only “if the Registrar is satisfied, in the course of examining a registered design, that a ground for revocation of the registration of the design has been made out.”  In that case the registered owner of the design may request that the Registrar amend the Register in such a way that the ground for revocation is removed.

18.   Under section 65(2) the grounds for revocation of the registration are that (a) the design is not a registrable design, or (b) any other ground prescribed by the Design Regulations 2004 (“Regulations”). 

19.   I can not find any basis for revocation of the Designs under the Regulations and, for reasons which follow, I find that the Designs are “registrable designs” within the meaning of section 15(1).

20.   In the result, the misdescription of the product name of the Designs must remain in the Register, however for the purposes of this decision and other actions based upon rights in the Designs, the product should properly be regarded as a toothbrush and not a set of bristles for a toothbrush.

21. Section 8 then directs that all references to the Designs are references to the Designs in relation to a toothbrush. The Designs are distinctive unless they are substantially similar in overall impression to a design that forms part of the prior art base.

22.   The attorney for the Owner submitted, inter alia, that a key visual feature of the Designs is that “the upper portion of each of the cleaning elements in all four peripheral groups of bristles have a different colour/shading to that of their respective base portions.”  In response, the primary examiner stated that there was a lack of supporting argument to establish that this feature materially affected the overall impression of an informed user.

23.   In determining whether the Designs are distinctive over the prior art base I must put myself in the position of the “informed user” – that person who is familiar with the product to which the design relates – and have regard, inter alia, to the statement of newness and distinctiveness and the particular visual features of the Designs described therein.  Moreover, if those features relate to only part of the Designs, I must have particular regard to that part of the design, but in the context of the design as a whole.

24.   Both registrations carry a statement of newness and distinctiveness which reads:

"Newness and distinctiveness reside in the features of the design shown in solid lines excluding those features shown in broken lines".

25.   Additionally, the representations of the Designs use so-called “grey-scale”.  As stated by Hearing Officer Herald in Reckitt Benckiser Inc [2008] ADO 1 (2 January 2008) at 49 and 50: “The use of grey scale is consistent with a representation that the various elements might be of any colour – without indicating any particular colour.”

26.   A significant visual feature of the Designs is that either the bristles, or a large proportion of the bristles, are shown in two-tone or two-colour, however you wish to perceive them - the tip portion being a different tone or colour to the remainder of the bristle.

27.   Each of the prior art citations illustrates a toothbrush having a head supporting tooth cleaning elements.   I note that there is nothing in the prior art showing 2-tone bristles, albeit that there are toothbrushes with differently coloured sets, or tufts, of bristles.

28.    As expressed in the Reckitt Benckiser case:

“the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.”

29.   I have made that assessment for myself, adopting so far as possible the mindset of the informed user (see Apple Computer Inc [2007] ADO 5 (20 September 2007)). Whilst the attorney for the Owner posited that the informed user in this instance might be an oral hygienist or an oral health educator involved in the provision of oral health services/education and whilst the primary examiner reasoned that the informed user was essentially a member of the public, I am satisfied that the relevant person is not a toothbrush designer nor is it a person who is unaware of what is available in toothbrush design, but would probably include both professionals and consumers who had (in either case) made it their business to be particularly aware of options available by way of the layout of toothbrush bristles.

Decision

30.   I am not satisfied that a ground of revocation has been made out. On my assessment of the standard, an informed user at the priority date would regard the Designs as distinctive in overall impression compared to the prior art base.

31.    I direct that examination of this design be taken as completed. The procedures of section 67 now apply.  I direct that a certificate of examination be issued in relation to Designs 320882 and 320884.

Debrett Lyons

Hearing Officer

Designs Hearings

17 August 2010