FCA US LLC
[2023] ADO 1
•30 May 2023
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination of design number 201810300 in the name of FCA US LLC
Delegate: | Louise Tuohy |
Representation: | Patrick Flynn of Senior Counsel instructed by Gilbert + Tobin and Pizzeys Patent and Trade Mark Attorneys |
Decision: | 2023 ADO 1 Designs Act 2003 (Cth) – examination of design under section 63 – section 19 considered – design new and distinctive over the prior art base – certificate of examination to issue |
Background
On 18 January 2018, FCA US LLC (‘Owner’) filed an application under the Designs Act 2003 (Cth) (‘Act’) to register the following design (‘Design’):
Design Number: 201810300
Product Name: Automobile ExteriorPriority Date: 6 September 2017 (US number 29/616,449) (‘Relevant Date’)
Representations:
The Design was registered on 19 February 2018 and examination of the Design was requested by the Owner on 10 November 2020. On 5 March 2021 a first examination report issued raising a ground for revocation. The examination report stated that the Design was not distinctive because it was substantially similar in overall impression to a single design (‘Citation’) in the prior art base which I have reproduced below:
On 6 August 2021 the Owner filed written submissions responding to the first examination report. The Owner submitted that the Citation should be excluded from the prior art base in accordance with ss 17 and/or 18 of the Act. On 11 August 2021 the examiner issued a second examination report maintaining the Citation as a ground for revocation. In the examiner’s view the Owner’s submission did not satisfy the requirements of ss 17 or 18 of the Act. For reasons that follow it was has not been necessary for me to decide this aspect of the Owner’s case.
On 2 September 2021 the Owner filed a request to be heard on this examination matter. The Owner duly filed written submissions together with the Declaration of Brian H. Nielander, Chief Designer of Performance, Passenger and Utility Vehicles at the Owner, made on 17 February 2023, with Attachment BHN-1 (‘Nielander’), and the Declaration of Ralph E. Smith, Assistant General Counsel Intellectual Property at the Owner, made on 20 February 2023, with Attachment RES-1.
As a delegate of the Registrar of Designs, I heard the matter in Canberra on 1 March 2023. Patrick Flynn of Senior Counsel appeared on behalf of the Owner instructed by Gilbert + Tobin and Pizzeys Patent and Trade Marks Attorneys.
Legislative framework
Pursuant to s 63(1) of the Act, a registered design must be examined if any person requests, or a court orders, the Registrar to do so. Examination of a design requires the Registrar to have regard to s 65(2)(a) of the Act which creates a ground of revocation if the ‘design is not a registrable design’. Section 15(1) of the Act states that ‘a design is a registrable design if the design is new and distinctive compared to the prior art base for the design as it existed before the priority date of the design’.
The prior art base is defined in s 15(2) of the Act which provides:
(2) The prior art base for a design (the designated design) 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.
What constitutes a new and distinctive design is defined in s 16 of the Act which provides:
16 Designs that are identical or substantially similar in overall impression
(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.
(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 (see section 19).
(3) Subject to paragraph 15(2)(c), the newness or distinctiveness of a design is not affected by the mere publication or public use of the design in Australia on or after the priority date of the design, or by the registration of another design with the same or a later priority date.
A design is ‘new’ unless it is the exact copy of a design that forms part of the prior art base. It follows that the difference of a single visual feature, irrespective of its significance, in either of the designs under comparison will be sufficient to establish that the design is ‘new’. In this case, the examination report did not take a ‘newness’ objection based on the Citation. For reasons detailed below this was, in my view, the correct approach.
To determine whether a design is ‘distinctive’, the decision maker must assess whether the design is substantially similar in overall impression to any design that forms part of the prior art base. Section 19 of the Act sets out the approach to be taken in assessing substantial similarity in overall impression and provides:
19 Factors to be considered in assessing substantial similarity in overall impression
(1) If 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.
(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).
(5) In this section, a reference to a person includes a reference to a court.
The Citation
The first examination report states that the Citation was posted on the JL Wrangler Forum (‘Forum’) website on 29 August 2017. However, the Owner does not accept that the publication date of the Citation is that attributed to it by the examiner and submits that the images on the Forum website including the Citation and advertising are not fixed.
The Citation was posted on 29 August 2017 by ‘Jay’, an Administrator of the Forum on the website The date of 29 August 2017 appears in the byline of Jay’s post. The Citation appears in thread number 15 dated 29 August 2017. It is Jay’s response to a comment by ‘Chuck h’ that appears under thread number 6 dated 29 August 2017.
I agree with the Owner that some images appearing in the JL Wrangler Forum website are dynamic because the evidence suggests particularly that images associated with advertising on the site regularly change. However, in the absence of evidence to show an administrator of the Forum altered the several posting dates or the Citation image appearing in the post by Jay, it appears on balance that the Citation image appearing in the post by Jay, was published on the website on 26 August 2017. This is before the Relevant Date and therefore forms part of the prior art base for the Design.
The Owner has raised the issue that the Citation only shows a front perspective of a vehicle, no detail of the rear of the Citation vehicle is shown, and only limited detail of the top of the Citation vehicle and its interior is depicted.
In Bitzer Kuehlmaschinenbau GmbH,[1]the owner argued that the examiners’ reports did not include representations which disclosed all angles of the prior art designs, merely single perspective views. It was argued by the owner that the examiner therefore had to infer an overall impression of the earlier designs. Delegate Lyons in that case referred to the criteria set out by Jessup J in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd[2] and further observed that:
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.[3]
[1] [2015] ADO 1 (Delegate Lyons).
[2] [2007] FCA 114.
[3] [2015] ADO 1, [21].
In the present case, I am satisfied that the single view disclosed in the Citation shows sufficient detail against which to assess the distinctiveness of the Design, for example, there is a general expectation that the right hand side view of an automobile exterior will mirror the left hand side view.
Standard of the informed user
Section 19(4) of the Act requires that factors prescribed in s 19 are to be assessed from the perspective of the informed user. The standard of the informed user is that of familiarity.[4] Therefore the informed user is a notional person that is familiar with the product to which the Design relates or similar products.[5]
[4] Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743 [67] (Yates J).
[5] Hunter Pacific International Pty Ltd v Martect Pty Ltd [2016] FCA 796, [39] (Nicholas J).
In the first examination report the examiner considered that the informed user is a person who is familiar with four-wheel-drive motor vehicles, or a motoring journalist who may write for a motoring magazine and have a particular knowledge of, and familiarity with motoring trends and designs across a range of vehicles.
The Owner submits that Mr Nielander, a person with experience in vehicle design, is an informed user. In Nielander, Mr Nielander identifies as the Chief Designer of Performance, Passenger and Utility Vehicles at the Owner. Prior to Mr Nielander’s current position he was the Chief Designer for Jeep Exterior Design and has been employed as a designer at DaimlerChrylser. As such, I accept that Mr Nielander’s professional experience in automobile exterior design gives him the requisite degree of familiarity to qualify as an informed user within the meaning of the Act.
State of development of the prior art base
The state of development of the prior art base plays an important role in assessing whether a design is distinctive for the purposes of the Act. The maturity of the prior art base, or lack thereof, influences how the informed user will perceive any differences between the design and the prior art. If the prior art base is well developed, the informed user is likely to have a greater appreciation of smaller visual differences between the design and prior art for the purposes of distinctiveness. If the prior art base is underdeveloped, more significant visual differences between the design and prior art will usually be required to avoid a finding of substantial similarity.[6]
[6] Ferrari S.p.A [2020] ADO 3 [22] (Delegate Barbey).
The product name of the Design is described as ‘automobile exterior’. Mr Nielander declares the 2018 Jeep Wrangler (JL) is the subject of the Design and that the Jeep Wrangler is a direct descendant of the Willy MB and Civilian Jeep. Mr Nielander declares that the Jeep Wrangler line of vehicles has been designed and manufactured and sold by the Owner and its predecessor companies since 1987.
The examination searches conducted for the Design include a set of Google image search results for: Jeep Wrangler; Jeep; four-wheel-drive motor vehicles; and sports utility vehicles. These results disclose the existence of a diverse range of automobile exterior designs. Whether looking at four-wheel-drives generally or only the Jeep Wrangler subset, at the Relevant Date there existed a crowded prior art base, and so the significance of smaller differences between the Design and the Citation should be carefully weighed when assessing the overall impression of each.
Freedom of the creator of the design to innovate
The designer’s freedom to innovate is informed and guided by the development of the prior art base. As described above the prior art base is mature and functional constraints have naturally emerged. That is, motor vehicles are required to include functional features such as headlights, grilles, hoods, doors, windows and bumpers.
The informed user, being a person familiar with the design of automobile exteriors, would be aware these features effectively serve to constrain the creator of the Design.
Statement of Newness and Distinctiveness (‘SoND’)
The Owner did not file a SoND. The description of the representations noted that any broken lines in the drawings depict environmental subject matter only and form no part of the claimed design.
Amount, quality and importance of the similarities in the context of the design as a whole
The Design and the Citation share obvious visual similarities. A comparison reveals that each design depicts a four door, open top vehicle with a raked front grille and round headlights.
The examination report considered that an informed user would be aware of the features that are considered substantially similar between the Design and Citation. These similarities include the shape and configuration of the bonnet, the indicator lights within the front guards, the shape and configuration of the front bumper, the lights and shape of the front grille, the side fender having a scooped shape behind the front guards, fuel filler and the rear protection bar.
The Owner submits that this assessment of the substantially similar features between the Citation and the Design is incorrect. The Owner submits the only evidence before the Office of an informed user is that of Mr Nielander and as set out in Nielander many of the features which the examiner considered to be substantially similar are in fact, points of difference.
As regards to the dissimilarities, significant differences between the Design and Citation exist in prominent areas where the informed user’s attention would likely be drawn. For the purposes of this side-by-side comparison I have outlined Mr Nielander’s evidence and reproduced the actual sections of the Citation together with the corresponding sections of the Design below:
In relation to the shape and configuration of the hood formation, Mr Nielander declares that the Citation does not disclose the raised power dome styling feature (‘nose’) of the Design; and the Citation’s hood bump stops for the windshield are round, in comparison the bump stops in the Design are rectangular. Mr Nielander also notes that the Citation includes a JEEP badge on the front of the hood which is not present in the Design. In relation to the hood hatch, Mr Nielander declares that the hood hatch in the Citation is smaller and a different shape to the hood hatch in the Design:
In relation to the front bumper, Mr Nielander declares that the centre portion of the front bumper in the Citation is smooth and lacking in detail; it lacks the access point for a winch; and is missing the split lines and exposed bolts for the removable endcaps, all of which are disclosed in the Design. In relation to the tow hooks, Mr Nielander declares that the red tow hooks in the Citation are squarer than the tow hooks in the Design which are rounded:
In relation to the headlamps, Mr Nielander declares that the headlights are flush with the grille in the Citation, in comparison the headlights in the Design are set back. In relation to the grille, Mr Nielander declares that the Citation does not disclose the angled bend in the grille of the Design:
In relation to the rear indicator formation, Mr Nielander declares that the Citation does not disclose the protruding rear indictor formation of the Design. In relation to the fuel door, Mr Nielander declares that the fuel door in the Citation is smooth, in comparison the fuel door in the Design has cut outs on either side of a horizontal bar which runs the diameter of the door:
In relation to the wheel fares, Mr Nielander declares that the Citation does not disclose the Design’s thin ribbon of material which separates the body colour on the wheel fares. In relation to the front turn signals, Mr Nielander declares that the Citation’s front turn signals are small squares, in comparison the Design’s turn signals are long rectangles. In relation to the side front fender vent, Mr Nielander declares that the Citation’s front fender vent employs a sharper angle than the Design:
| Front |
| Back |
In relation to the roof supports, Mr Nielander declares that the Citation does not disclose the protruding sections of the Design’s roof supports:
In relation to the door curve, Mr Nielander declares that the angles of the curve at the bottom on the Citation’s front doors end significantly above the hinge of the rear doors, in comparison the Design’s door curve ends at the hinge. In relation to the door hinges, Mr Nielander declares that hinges on the Citation doors are not the door hinges disclosed in the Design:
Similarity in overall impression
In determining whether the Design is distinctive over the Citation the Act mandates that the standard of the informed user must be applied in undertaking this assessment and that the more weight is to be given to the similarities between Design and Citation than to differences between them. In Multisteps Pty Limited v Source and Sell Pty Limited, Yates J observed that:
…although the test is based on impression, it is not based merely on a casual comparison between designs for a given article. There needs to be a studied comparison based on the prescriptions of s 19 of the Designs Act.[7]
[7] [2013] FCA 743 [55].
Mr Nielander’s submissions are comprehensive with respect to listing the differences that exist between the visual feature of the Design and the Citation. As set out above these differences include but are not limited to the hood, grilles, lights, bumper, hinges, roof supports and wheel fares.
In my view, there are major and minor visual differences between the Design and Citation. Collectively these differences serve to distinguish the overall impression conveyed by the Design when compared to the Citation. I consider the differences Mr Nielander has highlighted sufficient to confer the Design with the requisite distinctiveness.
I am satisfied that the Design is not substantially similar in overall impression to the Citation.
Decision
I find the Design to be new and distinctive. Accordingly, examination of the Design has been completed and I direct that a certificate of examination issue for Australian design number 201810300.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 May 2023
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