GWR Pty Ltd, Trading as Uniquip Industries, and Yuequing Myow Electric Co Ltd
[2011] ADO 3
•30 May 2011
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS,
WITH REASONS
Re:Request by Clipsal Australia Pty Ltd under section 63 for examination of Design Registration No. 323351 in the names of GWR Pty Ltd, trading as Uniquip Industries, and Yuequing Myow Electric Co Ltd
Delegate: Terrence Williams Representation: Design Owner: Kelvin Lord, patent attorney, Lord & Co patent attorneys
Requestor: Stephen Worthley, patent attorney, Madderns patent attorneysDecision: 2011 ADO 3
Section 63 request: Design not to be revoked on grounds of distinctiveness.Background
This matter comes before me because Clipsal Pty Ltd (“Clipsal”) has requested to be heard with respect to the examination of registered design 322933 (“the design” or “the registration” as appropriate).
The registration is for a product described as “Industrial Switch” and is in the names of GWR Pty Ltd trading as Uniquip Industries, and Yuequing Myow Electric Co Ltd (“the owner”). The design is sufficiently shown in the following representations, which appear in the Register of Designs.
Upper perspective view Lower perspective view
Top plan view Front plan view
Legislative framework
Registration
Sections 21-45 of the Designs Act 2003 (“the Act”) provide for a process by which a design may be registered after certain formalities are met and if the Registrar is not required, for various reasons, to refuse to register the design (s 39-44). The design was duly registered on 18 December 2008.
Examination
The Registrar must examine a registered design if any person (here Clipsal) requests or a court orders that the Registrar do so (s 63(1)). In doing so, the Registrar is to consider whether the registration of a design should be revoked, either because it is not a registrable design as defined by the Act (s 65(1) and (2)(a)) or because there is another ground prescribed in the regulations. If the Registrar is satisfied that a ground for revocation has been made out, the Registrar must give written notice to that effect to the registered owner of the design (s 66(1) and (2)).
In the present matter the examiner was not satisfied that the registration should be revoked and reported accordingly. Clipsal requested a hearing, as it was entitled to do under s 67(3). I conducted that hearing under delegation from the Registrar of Designs.
Registrable design
A design, in relation to a product, means the overall appearance of the product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation) of the product[1]. Under s 15(1) of the Act, a design is a registrable design if it is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design. The priority date of the design is 10 Ocotober 2008.
[1] s 5, definition of design; s 7(1)
Under s 15(2), the prior art base 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.
Section 16 of the Act provides that a design is new unless it is identical to a design that forms part of the prior art base for the design. More relevant for present purposes is s 16(2), on which Clipsal relies:
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.
Section 19 guides the process to be applied in assessing substantial similarity in overall impression. Under s 19, the Registrar is to give more weight to similarities between the designs than to differences between them. The Registrar must also:
·have regard to the state of development of the prior art base for the design;
·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
·have regard to the freedom of the creator of the design to innovate.
S 19(2)(b) provides that the Registrar must:
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
Relevantly, the design application includes a statement of newness and distinctiveness which reads:
The particular visual features of the design which are new and distinctive are shape OR configuration.
This statement is unhelpful in that it is self-serving without being specific. It does not identify any particular visual features in which the alleged newness or distinctiveness resides, nor does it serve to exclude any features as being extraneous to that question. As I said at the hearing, it is for me to decide, now, if the design is in fact distinctive. The statement of newness and distinctiveness is, because of its terms, irrelevant to that question.
Ultimately, s 19(4) provides that in assessing those matters I must apply the standard of the informed user. In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd, 79 IPR 214 (“Review”) Kenny J adopted the view of the UK County Patent Court in Woodhouse UK plc v Architectural Lighting Systems [2006] RPC 1. Both sides made submissions about who the informed user might be and this was a subject of some debate at the hearing as it goes a long way towards something more important, which is, per the UK case just referred to, an assessment of what that user would reasonably know:
“Informed” to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of “what’s about in the market?” and “what has been about in the recent past”? In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the “man skilled in the art” whose “nerd-like” (and other) attributes seem too technical: Technip France SA’s Patent [2004] R.P.C. 46 at [6–12] (CA).
I am required to approach the present matter from the viewpoint of a person who has the sort of knowledge described above.
Hearing and evidence
Both the owner and Clipsal were represented at the hearing which I conducted on 3 March 2011. The owner was represented by Kelvin Lord, patent attorney, of the attorney firm Lord & Co. Clipsal was represented Stephen Worthley, patent attorney, of the attorney firm of Madderns.
The parties had, as I directed, exchanged written submissions well before the hearing commenced, starting with those of Clipsal.
This matter is to be decided with the assistance of the following materials, all of which constitute relevant prior art:
1. The earlier materials submitted by Clipsal (“the earlier material”) to the examiner of designs
- D1 – D4, which are representations of certain designs registered by Clipsal either in Australia or in New Zealand. Those designs are for what appears to be simply a faceplate and switch. They do not include the “backbox” to which I refer below.
- Of those designs, D1 is a design registered in Australia, number 308318, with a priority date of 13 February 2006. For the sake of completeness without unnecessary elaboration I find that, if D1 does not impugn the distinctiveness of the design, D2, D3 and D4 could not do so. D1 is as follows, using representations from the Register of Designs:
Perspective views
Front and side views
- D5 is a poor copy of a Clipsal catalogue showing a range of weatherproof switches. Those switches include the WHB series of switches, each of which comprise a faceplate, a switch and a backbox intended to enclose and protect the electrical wiring where it is connected to the switch. The reproduction of the copy in evidence is such that, while it is possible to make out the approximate details, no one representation is adequate for reproduction in this decision. For the assistance of those reading this decision, it can be said that the WHB series switch incorporates, so far as I can tell, the faceplate and lever of D1 (shown previously) onto a backbox identical to that of the WHS/WHT series, which I will shortly depict.
2. The declaration of Gary Busbridge, including the Clipsal switch.
The Busbridge declaration, filed on 9 August 2010, establishes that designs disclosed in exhibits GB1 – GB5 to his declaration all constitute part of the prior art base. The exhibits disclose the WHS/WHT series of hoseproof switches (“the Clipsal Switch”), which appears as follows:The Clipsal switch was not disclosed in the earlier material. That design was thus not before the examiner of designs at the time that examination was requested. I confirm that the Busbridge declaration is made part of these proceedings by my permission, and that I gave necessary directions to allow the owner time to assess its relevance and to respond accordingly.
The owner’s material:
This consists of a declaration dated 8 October 2010 and made by Chadd Heatley and a written statement made Joe De Robertis. I will discuss these items in what follows.This matter is to be decided by a proper comparison of the design (as shown in the register)[2] to the Clipsal switch, and to D1, each of which forms part of the prior art base. That assessment is to be from the viewpoint of the informed user.
Decision and reasons
[2] LED Technologies Pty Ltdv Elecspress Pty Ltd 80 IPR 85 at [40] and following, and confirmed on appeal, Keller v LED Technologies Pty Ltd [2010] FCAFC 55 at [205].
Ultimately, the owner is successful here. Clipsal bears the onus in view of the terms of s 15 and I will now explain why I do not agree with its arguments. Alternatively, putting the matter in terms of the language of s 67, I am satisfied that Clipsal has not made out a ground of revocation.
Visual features assessed in context
Mr Worthley, in making Clipsal’s submissions, relied on a table forming part of his written submissions. This set out the points of similarity between the design and the Clipsal switch. He stressed that he was concerned that the examiner of designs, in her report, had listed the points of difference between the design and the earlier material. He alleged that the examiner had therefore given more weight to differences, rather than giving weight to similarities as required by s 19. That being so, he went on to stress that he was able to identify 32 similarities which he invited me to consider.
The principle on which Mr Worthley relied is that the Registrar, in applying the standard of the informed user, is to give more weight to similarities between the designs than to differences between them. None the less, some of the similarities that are listed are as trite as observing that both the design and the Clipsal switch have switches on the faceplate (an unsurprising fact, given that the backbox is intended for wall mounting, as Clipsal’s evidence confirms). The fact that the two designs result in switches that are the same size accounts for a further three similarities (length, breadth and depth) and the fact that each switch has two cable outlets at the top and at the bottom (performing the entirely logical functions of cabling in and cabling out, as Clipsal’s own material reveals) is said to justify two more items on the list. I will not draw this matter out by listing all of the similarities listed.
Mr Worthley did however stress that the lever action operated through the same angle in both the design and the Clipsal switch and that the pivot point was on the left of the faceplate in both instances. Absent any evidence about any electrical engineering requirements that might (or might not) dictate the extent of the throw of a lever-action switch, it is speculative to say that there is any significance in the size of the angle through which the lever pivots. As to the pivot point being located on the left, I would assume that such a configuration is explicable as being convenient for a right-handed person standing in front of the switch.
As I will explain, a list that is burdened with a plethora of insignificant similarities such as these will inevitably be unhelpful when one is faced with the more complex question of deciding if two designs are substantially similar in overall impression.
Clipsal’s written submissions, however, have a second strand. As I have said, the Clipsal switch was not disclosed to the examiner of designs, nor did she find it in her search. Clipsal’s written submissions therefore emphasize the differences, as perceived by the examiner, between the design and the switches shown in the earlier material (ie, the material that was disclosed to the examiner). The examiner had stated that the differences were as follows:
a) The raised guard on the design is non angled (sides are parallel), and reduces in height before midway of its length.
b) The corner of the raised guard of the design is rounded and placed flush on the left edge of the casing face.
c) The switch of the design has flat, parallel sides.
d) The switch of the design rises greater than the height of the guard at the left and slightly declines in height along its length.On that basis, the submission urges me to note the degree to which the (newly-disclosed) Clipsal switch resembles the design when regard is had to those aspects to which the examiner had referred. Such a submission is fundamentally flawed. I have recorded it for the sake of form but I would respectfully observe that, if Clipsal wished to rely on the examiner’s conclusions vis a vis the Clipsal switch, insofar as they might be relevant, the appropriate thing would have been to disclose the Clipsal switch to the examiner at the time of requesting examination.
Weighting and evaluation
In Review, Kenny J listed the factors set out in s19. She then said[3]:
Plainly enough, there are clear similarities between the Review Design and the design embodied in the Redberry garment. The cross-over bodice and V-neck is virtually identical. Both have a fixed waist, with a satin ribbon tie. Both have the same high back. There are also two distinct differences. These are:
(a) The Review Design skirt is figure-hugging to about half way to the hem, when it expands suddenly and significantly relative to the top of the skirt, giving the hem the ruffled look, to which both Ms Ellis and Ms Mudie referred. This is to be contrasted with the floppy or blousy appearance of the Redberry skirt from the waist to the hem.
(b) The pattern (including colour) of the Review Design and the Redberry garment are different.
[37] As regards the significance of the different skirts, I prefer Ms Mudie’s evidence to that of Ms Ellis, which, as counsel for Redberry noted, changed over the course of the proceeding. Ms Mudie’s evidence here was consistent with the fact that, in their internal business records, the applicants’ specifically described the dress that embodied the Review Design by reference to the cut of its (gored) skirt. In any event, the difference to which Ms Mudie referred is apparent from a comparison of the Review Design and the Redberry garment.
[38] If this were all, a finding of infringement might be readily made, since the similarities between the designs are to be given greater weight than the differences: s 19(1). As noted already, however, the inquiry under the Designs Act is more complex and sophisticated than this.
[3] 79 IPR 214 at [36] – [38]
Consistent with such an analysis, Kenny J went on to note that “The significance of the similarities and differences between these designs falls to be considered in light of the prior art”. She then noted a feature that “differentiates” the two designs, the shape and configuration of the skirt. She concluded that this feature, while not unknown in the prior art, was significant when combined with differences in pattern (including colour) which the prior art made plain were important visual features. Further into the decision, at [52], the judgment demonstrates how the perceptions of the informed user, as to what was and was not “important” or “significant” would govern the weighting given to various factors of shape, colour etc.
That being so, I think the necessary steps are to identify the informed user and apply the weighting that the informed user would give to both the similarities and the differences, within the overarching structure of s 19 and having regard to the apparent freedom of the designer to innovate, to which I now turn.
Freedom of the designer to innovate.
Mr Worthley emphasized, quite correctly, that there was no evidence that the prior art represented a crowded field, or one where there was limited freedom to innovate. Thus, he said, it was not possible for the design to qualify as distinctive. In his view, the owner had merely “tinkered with” the Clipsal switch “such as by shaving portions from features or changing the angle of tapered features”.
The owner has sought to be somewhat discreet about the basis on which its industrial switch was designed. Mr Heatley, the Managing Director of GWR Pty Ltd, declares that the design came about because “We advised Ms Ma (the creator of the design, and owner of Yuequing Myow Electric Co Ltd) that the industrial switches/isolators currently on the market are too rectangular, plain and bulky.” He also alleges that his customers have complained that “the existing switches are not convenient and appealing enough to be used with Air Conditioning Systems”. At exhibit CRH-1 he exhibits “examples of such switches”. The switches are depicted by way of pages taken from the websites of the merchants who apparently sell them. The only trade mark visible on the pages in evidence is CLIPSO, a trade mark registered, in Australia, to Mazen AbdulKader (sic). The records of the Trade Marks Office also make it clear that the CLIPSO trade mark has no connection with Clipsal[4]. So far as I can see from the front elevation views, which are quite small in the evidence, the switches displayed are as similar to each other as they are to the Clipsal switch. However, neither the Clipsal switch nor any other Clipsal design is shown. This omission seems to be unusual, at least if I take the owner’s submissions at the hearing at face value.
[4] Clipsal has sought removal of this trade mark, no 1267136, under s 92 of the Trade Marks Act 1995
Relevantly, Mr Lord argued that the Clipsal switch is one model in a long line of similar switches made by that company for 30 years, a line of switches that is so well-known that, he asserted, it could be called a “type” of switch. Mr Lord did not submit that the Clipsal switch is itself an example of a generic design, merely that it and other variants (such as D1) are well known and typical of this type of heavy-duty switch. “Type”, as I understand his usage of that word, is in the sense of indicating such switches that have a rectangular prism shape, use a lever action and have provision for protective guards and a lock. He did not argue that the creator of the design was unfamiliar with Clipsal switches of this general shape and configuration. If that is so, it seems that Mr Heatley’s omission of any reference to any of Clipsal’s earlier and similar designs was entirely deliberate.
I think the evidence of Mr Heatley, taken with this apparently deliberate omission, entitles me to infer that the owner set out to produce a design that was, if I reduce it to its essence, able to be seen by customers as a more aesthetically pleasing version of the “type” of switches of which the Clipsal switch is a typical example. There is, however, very little evidence to demonstrate that this type of switch is sold to any significant extent by anyone other than Clipsal. Mr De Robertis, who has made a signed statement on behalf of the owner, says that he has been working in the electrical industry for 20 years. He says that isolator switches “have to be of a certain size and shape to accommodate the multiple switch mechanisms inside”. He says that switches that incorporate the design are “not rectangular, plain and bulky like the equivalent switches on the market” but he fails to identify just what those “equivalent” switches might be. Mr Lord may have been factually correct when he said that such switches are “not unique to Clipsal”, but it is unclear if the informed user would be familiar with that fact.
I think I should thus approach this decision on the basis that the informed user would be much more likely to be familiar with the Clipsal switch and/or the similar designs shown in the earlier material than with any third party design. Mr Lord’s argument that the field is constrained, with reduced freedom of the designer to innovate, is thus not something that I find convincing. I am prepared to infer that the owners could have adopted any number of possible configurations of switch even within the rectangular format that was adopted. At one level, then, there is considerable force to Mr Worthley’s submission that, rather than creating a completely novel or innovative design, the owners chose, for no clearly-explained reason, to either “tinker with” the Clipsal switch or, as I would infer as one alternative, to produce a more aesthetically-pleasing version of it.
Whether that process has produced a new and distinctive design is to be assessed under s 19, adopting the standard of the informed user.
Who is the informed user?
As Mr Worthley pointed out, the design is registered in respect of an industrial switch. These can be used in many contexts; as a master switch for lighting or as a remote isolator switch for any sort of electrical equipment, be it a swimming pool pump, an air conditioning unit or a piece of workshop equipment. This means that there are a many potential users: a swimming pool maintenance contractor, the person charged with turning off the lights at a local sporting field after an evening sporting event, a janitor, a machinist in a workshop etc.
I think that Mr Lord is ultimately correct in his view that the informed user is typically an electrician. It is possible, of course, to envisage examples of other users who may, through experience with what is available, come to fit the description of an informed user. The manager of a local amateur soccer team, for instance, may gain familiarity with light switches at sporting fields throughout a district, as may those people who repair or maintain air conditioners or swimming pool pumps and filters. However, while those people may, over time, operate a wide range of switches, I am not convinced that they are necessarily any more “informed” on that topic than is the average adult who has, over many years, gained familiarity with the operation of a range of domestic light switches. Such a person might well recall next to nothing about the shape of their own light switches, let alone those of their friends and relatives. It might be fair to describe the pool maintenance contractor, and others of that ilk, as regular users rather than informed users[5].
[5] The distinction between an informed user and a regular user becomes glaringly obvious if one considers a product such as a dog-door. The regular user in such a case is canine and hence a long way from the notions set out in Woodhouse v Architectural Lighting, supra.
There are probably regular users who, by nature, are both observant and given to comparing one switch with another. It might be said that this habit leads to acquired knowledge of the shape and configuration of switch design and that such people become, over time, informed users. However, there is no reason to assume that such a group is at all large in number; such folk are likely to be numerically insignificant compared to electrical contractors. I would expect that it was the electrical contractor who would typically be responsible for the selection of industrial switches as part of the electrical work carried out to install this or that piece of industrial or domestic electric machinery. There is some evidence as to how Mr De Robertis would approach this question. He says that he orders switches that embody the design because “it is designed to be compatible with most of the domestic air conditioning systems and looks good on the wall next to the air conditioning unit”. I accept that view is likely to be broadly typical of the way most electrical contractors would approach the matter: they have a commercial incentive to become informed as to what is available, and could be expected to assess available products in terms of price and function. Within the scope of function, aesthetics might be expected to play at least some role, given that the switch, for all that it has to meet technical constraints, might also prudently be selected on the basis that unobtrusive design would be of value to at least some of the electrician’s customers.
There is, however, no basis to put questions of style or taste onto any higher podium. The evidence suggests that, for use with swimming pools or air conditioners in domestic installations, these switches are mounted, on a wall or other surface, such that the necessary electrical cabling typically enters and leaves the backbox via exposed conduit. In such a situation, elegant design is unlikely to be put at a premium, though, having said this, I note that both the design and D3 include scope for wiring to enter the backbox without visible conduit - “back wiring” as it is called in D5. I am prepared to assume that this is also the case with the backbox of the Clipsal switch.
Even if they are backwired, the presence of (blanked off, in such a case) apertures to allow the use of conduit gives any of these designs an air of what might be politely called practical functionality. They are all, apparently, intended for industrial use as well as for use with a domestic swimming pool or air conditioner. I am therefore not sure that a typical contractor would necessarily appreciate the “rounded, compact and fine details” of the design to the same degree as Mr De Robertis. However, presumably once the switch is fitted at a suitable height, in a convenient location but no more visible than necessary, a homeowner (ultimately, the person who pays the bill) may well have some preference for what he or she sees to be a switch of less utilitarian appearance.
The factors to which I have referred - price, technical requirements and aesthetics - therefore guide the approach of the informed user (typically, as I have said, an electrical contractor) in selecting switches. Critically, and as Mr Lord argued, the electrical contractor will also be called on to distinguish one switch from another by appearance in order to buy “more of the same”.
Having already dismissed the statement of newness and distinctiveness, and dealt with the issue of the development of the prior art base, it is necessary to assess the view of the informed user on the question of distinctiveness within the remaining terms of s 19.
Informed user’s overall impression of the points of similarity and difference
I am satisfied that an informed user would appreciate the similarities between the design and the prior art. I also appreciate the correctness of Mr Worthley’s observation that the differences are not “macroscopic”. I do not think, however, that it helps to approach the matter in terms of expecting the differences to be of what he called “substantial effect”. That is not the appropriate test under s 19, which structures the appraisal of whether the design under examination is distinctive.
Overall, the evidence supports a finding that the design will be seen as an aesthetically pleasing variation on the appearance of the Clipsal design and its precursors. The circumstances in which such switches will be bought and installed by the informed user will reduce the weight that such users would put on the similarities; the differences, on the other hand, thus become significant. These differences can be seen from the representations but, to my eye, the most significant of these is, in comparing the design to either D1 or the Clipsal switch, the changing height and shape of the guard that protects the lever from being inadvertently operated. This in turn seems to accentuate the differences around the nose portion of the switch where all three designs provide, differently, for a padlock to secure the switch in either the on or off position.
Those things being so, the informed user would not consider the design substantially similar in overall impression to the Clipsal switch or (for the sake of completeness) to the earlier WHB series switch or to D1.
Accordingly, I am not satisfied that a ground of revocation exists. Examination of the design is therefore complete and a certificate of examination will be issued.
Costs
I award costs, in accordance with the scale in the regulations, against Clipsal.
T. E. Williams
Hearing Officer
30 May 2010.
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