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…

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.

Continue reading Colgate-Palmolive Company Inc.

Details

AGLC: Colgate-Palmolive Company Inc. [2010] ADO 2
Case: [2010] ADO 2
Decision Date: 17 August 2010

CaseChat Overview and Summary

The decision involved a dispute between Colgate-Palmolive Company Inc. ("Owner") and the Registrar of Designs regarding the registration of design applications Nos. 320882 and 320884 for a set of bristles for a toothbrush. The Owner filed the applications on 31 July 2008, claiming a priority date of 15 February 2008. The applications were accompanied by a request for examination. The main legal issues revolved around whether the Designs were new and distinctive compared to the prior art base, as required by Section 15(1) of the Designs Act 2003. The examiner initially objected that the Designs were not new or distinctive because they were substantially similar to several prior designs owned by the Owner. However, following submissions from the Owner, the examiner conceded the newness of the Designs but maintained that they were not distinctive over the prior art.

The court had to determine whether the Designs were distinctive, as per Section 16(2) of the Act, by assessing whether they were substantially similar in overall impression to prior designs, taking into account the standard of the informed user as described in Section 19(2) of the Act. The Owner argued that the two-tone or two-colour bristles were a key visual feature distinguishing the Designs from the prior art. The court concluded that an informed user at the priority date would regard the Designs as distinctive in overall impression compared to the prior art base. Therefore, the Designs were found to be new and distinctive, and the examination of the design was taken as completed. A certificate of examination was to be issued in relation to Designs 320882 and 320884.

The final orders were that examination of the design be taken as completed and that a certificate of examination be issued in relation to Designs 320882 and 320884. The misdescription of the product as a set of bristles for a toothbrush instead of a toothbrush itself was noted but could not be amended post-registration. For the purposes of this decision and other actions based on rights in the Designs, the product should be regarded as a toothbrush.

Orders