Ferrari S.p.A.
[2020] ADO 3
•14 July 2020
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re: Request for examination of design number 201910301 in the name of Ferrari S.p.A.
DELEGATE: Nicholas Barbey REPRESENTATION: Phillips Ormonde Fitzpatrick DECISION: 2020 ADO 3
Examination of a design under section 63 of the Designs Act 2003 (Cth) – section 19 considered – design new and distinctive over the prior art base – certificate of
examination to issue
Background
On 18 January 2019, Ferrari S.p.A. (‘Owner’) filed an application under the
Designs Act 2003 (Cth) (‘Act’) to register the following design (‘Design’):
Design number: 201910301
Product name: Car and Toy-Car
Priority date: 26 July 2018 (EUIPO numbers 005515632 & 005515392)
Representations:1
1 For brevity, only the representations showing the Design applied to the car have been reproduced. Representations of the Design applied to the ‘toy-car’ have been omitted given they are identical.
Statement of Newness and Distinctiveness (‘SoND’):
Those features of the car and toy-car depicted in the representations that are new and distinctive are the shape and/or configuration. The wheels and tyres shown in the representations are not part of the design and are to be disregarded when considering the overall impression of the design. The design may be in mirror image, with the car and toy- car being right-hand drive, rather than left-hand drive.
The Design was registered on 28 February 2019 and examination of the Design was subsequently requested by the Owner. On 31 May 2019, a first examination report issued raising grounds for revocation. The examination report asserted that the Design was not distinctive because it was substantially similar in overall impression to the following designs (collectively ‘Citations’) in the prior art base:
Citation 2
‘The Ferrari 488 Spider Convertible Revealed’ (published 30 July 2015)
Citation 3
MR Collection Models (published 25 September 2015)
The Owner filed written submissions on 26 November 2019 responding to the first examination report. The Owner clarified that the Citations all relate to the Ferrari 488 Spider which was released in 2015 and is an earlier model of the Design. The Owner submitted that the Design was new and distinctive over the Citations due to the prominent differences in visual features such as the side air vents, bonnet, front bumper, fenders and the general body contour of the respective designs. The Owner asserted that these differences provide the Design with a ‘completely different appearance’ to the Citations.
On 28 November 2019, a second examination report issued which maintained the Citations as bases for revocation. Unpersuaded by the written submissions, the examiner explained that the SoND ‘does not identify the particular features that [the Owner] now assert confer distinctiveness in the present design against the cited design[s]’ and reiterated that, for the purpose of distinctiveness, more weight is to be given to the similarities between the designs than to the differences.2 The examiner maintained that the similarities between the respective designs ‘are very clear’ and asserted that the Design was a ‘refinement of the existing designs’ which is not substantially different in overall impression to the Citations.
2 The Act s 19(1).
On 29 November 2019, the Owner filed a request to be heard on this examination matter. A hearing was scheduled and the Owner was invited to submit further submissions and/or evidence by 12 March 2020. The Owner duly filed written submissions (‘Submissions’) together with the declaration of Anthony Moss dated 11 March 2020 with Annexures AM-1 to AM-5 (‘Moss Declaration’).
As a delegate of the Registrar of Designs, I heard this matter in Canberra on 19 March 2020. Chris Schlicht and Peter Wassouf of Phillips Ormonde Fitzpatrick appeared by video conference on behalf of the Owner.
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 consider whether a design should be revoked because, inter alia, it is not a ‘registrable design’.3
A ‘registrable design’ is a design that is ‘new’ and ‘distinctive’ when compared with the ‘prior art base’ for the design as it existed before the priority date of the design.4 The ‘prior art base’ is defined in s 15(2) of the Act which relevantly provides:
Registrable designs
(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 relevantly provides:
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.
3 Ibid s 65(2)(a).
4 Ibid s 15(1).
(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).
A design is ‘new’ unless it is an exact copy of a design that forms part of the prior art base. It follows that the absence 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’.
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 by reference to the factors prescribed in s 19 of the Act. This provision relevantly provides:
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).
Evidence
According to the Moss Declaration, the declarant is a director of Ultimate Driving Tours Pty Ltd (‘UDT’), a company which provides luxury adventure travel and event management services. UDT offers multiday tours known as ‘driving experiences’ wherein clients drive supercars rented by UDT from manufacturers such as Lamborghini, Porsche and the Owner. The declarant conducts these tours and states that he has a thorough knowledge of various
supercars in order ‘to help clients understand that different supercars offer different experiences’.5 The declarant observes that his clients are interested in driving the most modern vehicles and that their appreciation of supercars is affected by the aesthetic qualities of the vehicles. As such, the declarant monitors new vehicle launches and regularly drives supercars to keep abreast of developments in the high-performance car market.
The declarant also conducts client engagement events on behalf of various car dealerships. In this capacity, the declarant is required to explain the features and specifications of vehicles to both existing and prospective customers. The Moss Declaration also details the declarant’s background in the motoring industry prior to his role with UDT. Relevantly, the declarant was a committee member of the New South Wales Porsche motoring club and an organiser of various Australian motoring events. The declarant states that his comprehensive understanding of the specifications and performance of a wide range of vehicles enabled him to fairly categorise vehicles for the motoring events he organised.
The declarant identifies the designs depicted in the Citations as being the Owner’s ‘488 Spider’ vehicle model and the Design as being the Owner’s ‘488 Pista Spider’ vehicle model. The declarant categorises both vehicle models as being supercars. This motor vehicle subcategory comprises of ‘high-performance street legal sports cars’ which are typically at the highest price range for vehicles and are produced in limited quantities.6 In the declarant’s view, there are numerous visual differences in the designs depicted in the Citations when compared to the Design. These differences provide the Design with a ‘more aggressive and powerful’ overall appearance than the designs shown in the Citations. As such, the declarant concludes that the overall appearance of the respective designs are ‘very different’.7
Discussion
The Citations
From the outset, I am satisfied that each of the Citations was published in a document before the Design’s priority date. As such, the Citations form part of the prior art base for the Design.
5 Moss Declaration, [5].
6 Ibid [18].
7 Ibid [20].
The Moss Declaration identified the designs exhibited in the Citations as displaying the same design – namely, the Owner’s ‘488 Spider’ vehicle model. Citation 1 is the line drawing of the ‘488 Spider’ vehicle model whereas Citations 2 and 3 are the design of the ‘488 Spider’ vehicle model applied to a car and toy-scale car, respectively. The Submissions confirmed that the Citations all relate to the same design and, having reviewed the Citations, I am satisfied that this is the case.
The Design contains different visual features to those present in the Citations. For example, the centre of the front bumper in the Design exhibits a trapezoidal shaped air scoop that is not present in the front bumper of the Citations. Likewise, the rear diffusers of the Design wrap around the lower rear lights whereas the rear diffusers in the Citations do not. Given these visual differences, I am satisfied that the Design is ‘new’ for the purposes of s 16(1) of the Act.
Accordingly, I must now determine whether the Design is ‘distinctive’ over the Citations. This requires a consideration of the factors listed in s 19 of the Act.
Standard of the informed user
Section 19(4) of the Act requires that the factors prescribed in s 19 are to be assessed from the perspective of the informed user. The requisite standard of the informed user is that of familiarity.8 As such, the informed user is a notional person that is familiar with the product to which the Design relates or similar products.9 To this end, it is not strictly necessary for the informed user to be an actual user of the product, but familiarity can be acquired through use.10 Similarly, the requisite standard of familiarity does not automatically exclude a design expert.11
The product name of the Design is described as ‘car and toy-car’. It is apparent from the representations that what is depicted is a sports car and a toy-scale sports car, given the low height and aerodynamic shape of the car. Broadly speaking, sports cars are motor vehicles designed with an emphasis on speed, manoeuvrability, and dynamic performance. Sports cars fall under the umbrella term of ‘performance cars’ which encompasses categories such as
8 Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743, [67] (‘Multisteps’).
9 Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796, [39].
10 Multisteps (n 8) [66].11 Ibid [67].
supercars and hypercars.12 Performance cars are a subcategory of motor vehicles. The informed user would therefore be a person familiar with the functional and aesthetic aspects of sports cars or similar products. A person familiar with sports cars will possess a greater understanding of the features relevant to a car’s performance and would be attuned to design variations that users of standard motor vehicles would not ordinarily possess. Generally, the same is true of toy-scale sports cars given these products replicate their full-scale counterparts and are typically sought by detail-oriented collectors. In this context, I consider the standard of the informed user would include sports car enthusiasts and collectors.
The Owner asserts that the standard of the informed user should be construed narrowly. Specifically, it should be confined to that of a person familiar with supercars because the Design relates to a car that retails for ‘over $600,000 and is offered in limited edition only’.13 In my view, neither of these reasons justify further restricting the class of persons that fall within the ambit of informed users of the product. This is because the retail price of the product set by the Owner is not determinative of its fundamental nature14 and the production volume is at the Owner’s sole discretion. With that said, I am cognisant of the fact that the standard of the informed user is not strictly confined to a single class of persons.15 I accept that Mr Moss is an informed user within the meaning of the Act, since supercars are a type of sports car16 and the informed user is taken to be familiar with similar products to which the Design relates.17 Mr Moss’ enthusiast background in combination with his professional experience using various supercars endow him with the requisite degree of familiarity to qualify as an informed user.
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
12 Such terms have an inherent degree of subjectiveness and are seemingly distinguished based on factors such as horsepower, price and production volume. To that end, hypercars may be conceptualised as being high performance supercars and supercars may be conceptualised as being high performance sports cars.
13 Submissions, [31].
14 The Act s 7(3)(b) specifically excludes the materials used in the product as being a visual feature of a product. Design protection under the Act protects the overall appearance of the product and not its function or the materials from which it is made. As such, there is nothing preventing the visual features of the Design being applied to cars or toy-cars sold at a lower retail price.
15 Multisteps (n 8) [70].
16 Moss Declaration, [18]. The declarant states ‘A supercar is a high-performance street legal sports car’ (emphasis added).
17 The Act s 19(4).
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, then the informed user is likely to have a greater appreciation of smaller visual differences between the design and prior art for the purpose of distinctiveness. On the other hand, 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.
Aside from mentioning that supercars ‘have been released over the past 20 years’,18 the Moss Declaration is silent as to the development of the prior art base for the Design. The Owner contends that the prior art base is highly developed given new models of supercars are released annually by ‘most, if not all, major players in the supercar market’19 though no corroborative evidence has been filed in this regard.
The examiner’s search results on file reveal that the prior art base for sports cars and toy-scale sports cars is mature. Relevantly, the examiner’s search results disclose the existence of a diverse range of front and rear bumper options, bonnet configurations, diffuser arrangements, spoiler sizes and air vent shapes. This is unsurprising given new vehicle models have purportedly been released annually over the past 20 years. As such, there is considerable merit in the Owner’s submission that the informed user is likely to ‘observe and appreciate differences that might be considered more subtle by a person unfamiliar with supercars’.20
Statement of Newness and Distinctiveness
The application for the Design included the following SoND:
Those features of the car and toy-car depicted in the representations that are new and distinctive are the shape and/or configuration. The wheels and tyres shown in the representations are not part of the design and are to be disregarded when considering the overall impression of the design. The design may be in mirror image, with the car and toy- car being right-hand drive, rather than left-hand drive.
Pursuant to s 19(2)(b) of the Act, the informed user must have particular regard to the visual features identified in the SoND which, in this instance, are the shape and/or configuration of the Design. Two further strands can be drawn from this SoND: a) the informed user should pay less attention to any pattern and/or ornamentation present in the Design and b) the wheels and
18 Moss Declaration, [10].
19 Submissions, [104].
20 Ibid [106].
tyres shown in the representations should likewise be afforded diminished attention.21 For completeness, the last sentence of the SoND which states ‘The design may be in mirror image, with the car and toy-car being right-hand drive, rather than left-hand drive’ is immaterial given the Citations all depict the vehicle in left-hand drive.
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 explained above, the prior art base for the Design is mature and functional constraints have naturally emerged. The Owner submits that the inherent features of a motor vehicle constrain the designer’s freedom to innovate. That is, motor vehicles are required to include functional features such as headlights, doors, bumpers and windshields with little to no deviation permitted in terms of their positioning on the vehicle body given ‘industry norms’.22
The Submissions highlight that the performance aspect of supercars further inhibits the freedom to innovate. This is because the designer is required to optimise the aerodynamic properties of the product whilst operating within the parameters dictated by the inherent functional requirements of a motor vehicle. To this end, Mr Moss provides the following insights:23
These types of vehicles [being supercars] will be as low to the ground as possible to provide a lower centre of gravity. The general shape of the vehicles will appear streamlined and will include a downward sloping front section and a downward sloping rear section, along with front and rear diffusers, to decrease lift/increase downforce. At the rear of the vehicles there will be wings or spoilers. Given the size of the engines in these vehicles, air inlets/vents are incorporated on the fronts and sides of the vehicle body. Further, engines in these vehicles are often located in the mid or rear sections to increase acceleration and braking ability of the car, resulting in additional air outlet vents around the mid-rear section of these vehicles.
The Moss Declaration also draws attention to the fact that there is limited scope in which to re- design supercar features such as the shape of the windshield, side mirrors and side doors.24 On this basis, Mr Moss believes that such features do no contribute significantly to the overall appearance of the respective designs. The implication being that the freedom to innovate largely resides in the front and rear areas of the vehicle.
21 The Act does not provide for visual features to be wholly disregarded or disclaimed.
22 Submissions, [108].
23 Moss Declaration, [32].24 Ibid [35].
The informed user, being a person familiar with sports cars and toy-scale sports cars, would be aware of the aforementioned limitations which curtail the designer’s freedom to innovate. As such, the informed user would attribute less importance to the visual features that arise purely from these inherent or functional features.
Amount, quality and importance of the similarities in the context of the design as a whole
The Design and the Citations share obvious visual similarities. A broad-brush comparison reveals that each design depicts an open top vehicle that has two seats, two doors, a sloping bonnet, a slanted rear engine hood and an acute angled windshield. The Owner submits that these similarities ‘arise primarily from design features which are inherently present in motor vehicles or supercars’.25 This is echoed in the Moss Declaration which explains that the similar design profiles stem from elements which are essential to supercars.26 The informed user is therefore unlikely to conclude that the Design lacks distinctiveness simply because it shares visual similarities with the Citations in the general positioning of, for example, the rear engine hood, the sloping bonnet or low height of the vehicle. As discussed in the Moss Declaration, the presence of these visual features would be expected by an informed user given they provide a functional purpose. It follows that the quality and importance of these visual similarities, in the context of the Design as a whole, are accordingly diminished.
As regards to the dissimilarities, significant differences between the Design and the Citations exist in prominent areas where the informed user’s attention would inevitably be drawn. For example, the bonnet of the respective designs contributes significantly to their overall visual impression due to its centrality and large visible surface area. The inclusion of the air dam and the resultant angular shaped bonnet depicted in the Design creates an appreciable point of difference to the bonnets shown in the Citations which do not incorporate an air dam but instead feature a smooth appearance. Similarly, the presence of the trapezoidal shaped air scoop in the centre of the Design’s front bumper provides another important point of difference to the front bumpers shown in the Citations which do not contain this feature. Importantly, these visual features also serve a specific functional purpose given they increase the vehicle’s downforce by directing air flow into the scoop and releasing it out through the air dam over the bonnet.27
25 Submissions, [113].
26 Moss Declaration, [32].
27 Submissions, [59].
The rear of the vehicle constitutes another prominent area that would be inspected by an informed user and pronounced visual differences exist between the Design and the Citations in this regard. This is particularly evident in the presence of the lower side air dams as well as the wrap around diffusers present on the rear of the Design. Both features are absent in the rear of the designs in the Citations. Likewise, the upper rear lights shown in the Citations are set within a cavity whereas the upper rear lights displayed in the Design contain no such feature. Reproduced below are the front and rear view of the respective designs with the visual differences highlighted as mentioned in this paragraph and at [32] of this decision:
Design
Citation 1
Citation 2
Citation 3
Furthermore, a comparison of the side views of the Design and the Citations reveals four notable differences. First, as the Opponent points out, the Design’s ‘front tip has a side profile resembling the letter “M” rotated 90o anti-clockwise’28 whereas the front tip shown in the Citations is flat. Second, the side of the air inlets positioned at the front of the vehicles slope in opposite directions with the Design’s air inlets sloping towards the front wheel and the Citations sloping away from the front wheel. Third, the Design’s side air vent does not contain the large downward facing panel that is positioned in the middle of the side air vents shown in the Citations. According to Mr Moss, the removal of the downward facing panel in the Design improves air suction and provides the engine with a cleaner air flow. Finally, the Design’s rear spoiler protrudes upward and is separated from the body of the vehicle whereas the rear spoiler shown in the Citations ‘flows with the rest of the body panelling and drops downward to be flush with the boot’.29 In Mr Moss’ view, the Design’s pronounced rear spoiler has a functional advantage given it ‘increases downforce across the rear of the car’.30 Reproduced below are the respective designs with the visual differences highlighted:
Design
Citation 1
28 Submissions, [65].
29 Moss Declaration, [31].
30 Ibid [33].
Citation 2
Citation 3
Similarity in overall impression
Determining whether the Design is distinctive over the Citations requires a holistic assessment of the factors prescribed in s 19 of the Act. The Act mandates that the standard of the informed user must be applied in undertaking this assessment and that more weight is to be given to similarities between the Design and the Citations than to differences between them.31 Pertinently, the assessment is not based on a fleeting impression or casual appraisal. Rather, the informed user will undertake a studied comparison of the overall impressions conveyed by the respective designs.32
The Submissions are comprehensive with respect to listing the differences that exist between the visual features of the Design and the Citations. Major differences include the presence of the air dam and wrap around rear diffusers whilst minor differences include the bottom fin appearing in the front inlet as well as the variation in the side skirts of the vehicles. Nevertheless, simply setting out a list of visual differences does not, without more, establish that the Design is distinctive over the Citations. Distinctiveness for the purposes of the Act is not determined by a purely quantitative approach to the visual differences. Instead, it involves a qualitative assessment which carefully evaluates the factors prescribed in s 19 of the Act. As such, depending on the circumstances, what may objectively appear to be a minor difference
31 The Act s 19(1).
32 Multisteps (n 8) [55].
between a design and the prior art may still be sufficient to confer the design with distinctiveness.
In the present matter, the Owner has led evidence regarding the overall impression that would be conveyed by the Citations and the Design to an informed user, namely Mr Moss. In Mr Moss’ view, the respective designs are ‘very different’ because the overall appearance of the Design is ‘more aggressive and powerful’ than the designs shown in the Citations.33 I find Mr Moss’ evidence persuasive. Notably, Mr Moss explains that some features present in the Design are absent in the Citations, such as the bonnet air dam and rear air dams. These differences create visual distinctiveness and, importantly, provide a functional purpose. In this instance, for example, the air dams increase the aerodynamic and cooling properties of the vehicle.34 The informed user’s awareness of such features would thus be heightened in the context of sports cars where the vehicle’s performance is of primary importance.
Moreover, nothing turns on the SoND because no readily apparent pattern or ornamentation is present in the Design. Similarly, the designer’s freedom to innovate is constrained by the inherent features of a motor vehicle and additional constraints are imposed by the product being a sports car which must possess aerodynamic features, such as a low height, to be fit for purpose. Thus, the informed user would apportion more weight to areas where the designer has freedom to innovate. In Mr Moss’ view, this would be the front and rear section of the vehicle. Substantial visual differences exist in these areas such that these specific differences in combination with other minor differences combine to significantly alter the overall impression conveyed by the respective designs.
Finally, the state of the prior art base for sports cars and toy-scale sports cars is mature. As such, smaller visual differences between the Design and the Citations are capable of giving rise to a finding of distinctiveness. However, placing reliance on smaller visual differences to distinguish the respective designs is not strictly necessary in this matter. This is because both major and relatively minor visual differences exist between the respective designs. Collectively these differences distinguish the overall impression conveyed by the Design when compared
33 Moss Declaration, [34].
34 Ibid [33].
to the Citations, particularly given the informed user would be acutely aware of both in view of the mature prior art base.
In view of the above, I am satisfied that the Design is substantially different in overall impression to the Citations.
Decision
I am satisfied that no grounds for revocation exist. As such, examination of the Design has been completed and a certificate of examination may now issue for Australian design number 201910301.
Nicholas Barbey Hearing Officer
Oppositions and Hearings Trade Marks and Designs 14 July 2020
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