Icon Plastics Pty Ltd
[2007] ADO 2
•5 July 2007
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS, WITH REASONS
Re:Design Registration number 303361 - Electrode Plate Cover Edge Strip - in the name of Icon Plastics Pty Ltd.
| Delegate: | Terry Williams |
| Representation: | Applicant: J Roger Green and Belinda Wadeson of Watermark Patent & Trade Mark Attorneys, Melbourne. |
| Decision: | Registered design new and distinctive, not to be revoked |
Background
The refinement of copper to a level of purity such as is used for copper wire requires, typically, electrolysis in a hot sulphuric acid bath, with pure copper being deposited on a cathode which, in a typical industrial application, is a stainless steel plate, 1m x 1m x 3mm thick. This plate is partly immersed in the acid bath and copper is deposited. The copper will tend to form a ‘skin’ on the steel plate, this skin growing to some 7mm thick before the process is terminated. Even so, the copper skin can be stripped off, using a hydraulic ram to flex the plate, provided the copper is allowed to form only on two faces and one edge of the plate. The object, in other words, is to prevent such deposition on the remaining two edges of the plate, which would lock the copper around the cathode as a solid assemblage. The prevention of electro-deposition of copper on the remaining edges is the entire purpose of the cover strip the subject of the present design registration.
The registered design appears as follows
and the application for registration sets out the following statement of newness and distinctiveness in terms of s 19 of the Designs Act 2003 (“The Act”):
“Novelty resides in the internal cross-sectional shape of the electrode plate cover edge strip of indefinite length as shown in the drawings.
The registration, 303361, is owned by Icon Plastics Pty Ltd (“Icon”). The relevant application for registration was filed on 17 Feb 2005.
Icon has requested examination of the registration. I will come, below, to the legislative framework but for present purposes it is enough to note that, in furtherance of this examination, a delegated examiner of designs has reported that grounds for revocation exist because the registered design is “substantially similar in overall impression” to an earlier registration, 305113[1] (“the earlier design”), which is also owned by Icon. As such, it is said that registration 303361 is not “new and distinctive”, and ought to be revoked.
[1] The scheme of the Act is such that the prior application has matured into a registration with a numerically higher number.
The patent and trade mark attorneys for Icon, Watermark, made written submissions to the examiner, who has continued unchanged in her view, which she supported in two further reports. The owner therefore requested to be heard on the matter. I was assigned to conduct that hearing and am to decide the matter, under delegation from the Registrar of Designs. At that hearing, the owner was represented by J Roger Green and Belinda Wadeson, both of Watermark.
The owner’s arguments fall under two headings, one of which is a matter of legislative construction. Resolution of the construction issue will define the relevance of the earlier design, Ms Wadeson seeking to show that it must be excluded from the prior art base.
Scope of prior art base – is earlier design relevant?
Under that heading, Ms Wadeson argued that I could have no regard at all to the substance of the earlier design because it was within the scope of s 17(2), material that must be disregarded for the purpose of deciding if the registered design is new and distinctive. This was said to be because the registration of the earlier design constituted “information given” … by “the registered owner” “to the Commonwealth”. This is an interesting argument, and I set out the provision in full.
(2) For the purpose of deciding whether a design is new and distinctive, the person making the decision must disregard:
(a) any information given by, or with the consent of, the registered owner of the design, or the registered owner’s predecessor in title, to any of the following, but to no other person or organisation:(i) the Commonwealth, a State or a Territory;
(ii) a person authorised by the Commonwealth, a State or a Territory to investigate the design; and(b) anything done for the purpose of an investigation mentioned in subparagraph (a)(ii).
The submissions relied on by Ms Wadeson make it abundantly clear that, in the view of the persons who prepared them, material appearing on the register in relation to any earlier design is, as I understand it, invisible for the purpose of examination or assessment of later designs registered or sought to be registered by the same person. I believe that the argument has misconstrued the provision.
Section 17 is properly seen as an overlay on s 15. Section 17 is designed to do no more than to allow, for example, a defence contractor to provide sample material to the Department of Defence while still keeping the benefit of a design application. For present purposes, s 15 is directly on point and illustrates the distinction between the information supplied by an owner of the design and the actions of the registrar in furtherance of statutory obligations. It reads:
15Registrable designs
(1) A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
(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.
10. The only possible reading of this is that the prior art base includes the earlier design.
11. The written submissions incorporate an alternative argument. Ms Wadeson argued that any publication of the information given to the Commonwealth in the application for cited prior registration 305113 did not occur until at least after 20 January 2006, as the earlier design was not actually registered until 20 January 2006, almost one year after the priority date of registration 303361. She is correct in these details, as far as they go. At the priority date of the registered design, the earlier design was not registered. However, I have already noted the relevance of s 15(2) to such a set of facts and will not repeat my comments. The earlier design, in short, is part of the prior art base and must be considered.
New and Distinctive?
Legislative provisions
12. It is necessary to set out some of the legislative framework here, with emphasis on the part of the process that affects Icon.
13. Icon has requested the registrar to examine the registered design. Ms Wadeson’s submissions imply that there an infringement action might be anticipated, for which I note that under s 73 a certificate of examination is needed.
14. There would, conversely, be a ground to revoke the registration if the design, on examination, is found not to be registrable – s 65(2)(b). Typically, this would be if it is not “new and distinctive” - s 15(1) - when compared with the prior art base. The other possible ground for revocation would involve - s 65(2)(b) - “any other ground prescribed in the regulations. No such other ground is said, by the examiner, to exist.
15. Ms Wadeson noted, and I concede, that registered design 303361 is “new” in terms of s 16(1), in the sense of not being identical to the earlier design. “Distinctive” is a separate test and the registration, if it is to survive, must also cross this latter hurdle, posited by s 16(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).
16. The prior art base is defined by s 15(2), with which I have already dealt.
17. I come therefore to s 19:
(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.
Applicant’s arguments, and discussion
18. Ms Wadeson addressed the issue of the informed user. She noted the Australian Law Reform Commission report, to which to legislation is the government’s response though, as will be seen, it is not an exact manifestation. It is said that [emphasis added for the purpose of the Watermark written submission]
The ALRC Report 74 at 5.17 to 5.21 discusses who shall assess distinctiveness, and recommends that distinctiveness should be assessed by applying the standard of the informed user (Recommendation 34).
5.17 Informed User.
The Commission recommends that the novelty and distinctiveness of designs should be assessed from the perspective of the 'informed user'. The concept of the informed user is flexible enough to incorporate where relevant the views of consumers, experts, specialists and skilled tradespersons. At the same time it does not, and should not, require that the expert or consumer be the test in all cases. The informed user would be defined as a person who is reasonably familiar with the nature, appearance and use of products of the relevant kind. This recommendation is reflected in the draft clauses in Appendix A. [emphasis added]
The draft clause from Appendix A reads:
3) For the purposes of subsection (2), an informed user is someone who is reasonably familiar with
(a) the nature, appearance and use of products of the kind or kinds that include the products for which the designs were created; and
(b) any other design for products of the kind or kinds mentioned in paragraph (a) that have been publicly available and of which evidence is before the Court or Registrar.Recommendation 34 was accepted in the Government Response:
No 34. Distinctiveness should be assessed by the standard of an informed user.
Accepted - the courts should assess designs from the position of a person likely to be familiar with the prior art. An 'informed user' is a person familiar with the design product, for example consumers, experts, specialists and skilled artisans, but is not a design expert.An informed user is not necessarily any one of these individuals, but is a hypothetical construct which is intentionally flexible enough to incorporate the views of more than one person.
19. I think this goes too far in subordinating the language of the provision to the extrinsic materials. The legislation does not adopt precisely the ALRC formulation and should, on the face of it, speak for itself. Beyond that, it is difficult to suggest that a notional informed user is a melding of the (probably divergent) views of those who exemplify a range of informed users. A better approach is to say that, in dealing with this jury question, the legislation defines a standard, such that the registrar or the court should postulate the view of a typical member of a sample of informed users.
20. The standard is set, firstly and most obviously, in relation to “users”. At one end of this sample there might (in a general case, of a typical consumer product) be the informed consumer, while at the other there might be the design expert or the aficionado. In another case (say, of car parts) informed users would include mechanics and panel-beaters or auto electricians and might, depending on the product, include vehicle operators.
21. It can be said, of any such range of viewpoints, that to apply the standard of the informed user for the purpose of s 19 would therefore be to postulate a user that is “reasonably” informed; not either barely informed, on one hand, or fully expert on the other. Specifically for present purposes, I believe the appropriate standard would be that of an engineer responsible for the design of the copper refining process or, at very least, a skilled foreman responsible for careful control of that process within defined parameters that include, inter alia, an awareness of the need to ensure the use of appropriate cover strips.
22. Ms Wadeson went well beyond this. She drew an analogy with motor cars, urging that an informed user was someone who could at sight, perhaps even at a distance, identify as significant the various minor differences between (to adopt her example) the VT and VZ models of Holden Commodore. This seems to me to have, at its core, a circular argument: “differences between such cars are new and distinctive if there are people who can detect them and know that they mean a year-model variant”. No doubt such people would be members of the class of people constituting informed users, but I believe they would be at the expert or aficionado end of the range.
23. A reliable guide to the assessment of the views of a reasonably informed user may come from the evidence presented by Icon. The design owner relies on two declarations made by its business development manager, Owen Perham. I find his declarations helpful since he gives evidence that, in this country, his company supplies nearly 100% of the relevant cover strips. His firm is thus in an excellent position to know the market.
24. Mr Perham considers that his contributions to his company’s designs and his interaction with industrial designers render him an expert in this field, as distinct from being, for my purposes, a reasonably informed user. He considers that metallurgists, process engineers and line workers[2] in copper refineries are be “well informed” and would distinguish one cover strip from another on the basis of their internal features with, comparatively speaking, greater similarity of external features being the norm.
[2] Consistently, Ms Wadeson argued that I should have regard to the dangerous environment of the production process as showing that process workers, almost by definition, would be highly discriminating about all aspects of their work, including the fine points of the strips they were required to apply. With all due respect to the somewhat consistent opinion of Mr Perham, such an assumption appears to be as unjustified as would an equivalent assumption about the necessarily discriminating judgement and attention exercised by car drivers.
25. Mr Perham’s declaration also shows, inter alia, that the earlier design was a prototype of which no samples now exist, and that the design was at no stage commercially produced. He declares that a design reproduced as exhibit OP-7, which is a quite unclear photograph, is the design that is the subject of the present registration. An exhibit that, so far as I can tell, is very close to the one depicted in exhibit OP-7 was tendered at the hearing. I observe that, to the eye, the exhibit tendered is observably different to the registered design, as is, so far as I can see, exhibit OP-7. Ms Wadeson attempted to explain that the difference between OP-7 and the registered design was inconsequential, or a minor variation that would, in use, take up the shape shown in the registered design. I accept that this is so, and I also infer that the shape shown in the following scanned image of the exhibit tendered at the hearing is subject to change when the cover strip is in place on the cathode and the assemblage immersed in a hot acid bath[3].
[3] I note that, beyond this, the exhibit tendered at the hearing is not perfectly symmetrical and assume that this is just a minor imperfection. It may even be that the sample provided to Ms Wadeson, while illustrative, was scrap or surplus because it was out of tolerance due to manufacturing error.
26. I reproduce Mr Perham’s second declaration in full because [with my own addition in square brackets] it describes the facts of the case.
Exhibits OP2-1 and OP2-2 are drawings of cross-sectional views of the cover edge strip, with referenced dimensions. These references are used below. Functional limitations imposed on the design of a cover edge strip include the following:
Exhibit OP2-2 shows that cover edge strips are attached to opposite edges of a cover edge (sic) plate.
The dimensions of the electrode plates are standardised at 1m x 1m x 3mm, dimension 'C' being 1m. The dimension 'D' is determined by the width of the acid bath and the conveying apparatus that grips the cover edge strips is also positioned to suit the width of the acid bath. This dimension is fixed and is not subject to variation unless different apparatus is installed. Thus, dimension 'B', being the distance from the rear edge of the outer profile and the rear edge of the inner profile, is substantially fixed and not subject to variation.
Referring to Exhibit OP2-1,
the overall depth 'A' of the cover edge strip is fixed in order that a robot may apply a wax bead at the correct location. Thus, both dimensions 'A' and 'B' are fixed and not subject to substantial variation, because they are determined by the electroplating apparatus within which the cover edge strips are required to operate.
[It will be noted that the drawing at exhibit OP2-1 omits the rectangular shapes visible inside the cover strips shown in OP2-2. These rectangular shapes are the end view of plastic retaining strips that align parallel with the edge of the plate. The retaining strips have pins that pass through holes drilled in the plate. This ensures that the retaining strips are themselves parallel to the edge of the plate. To then install the cover strip, a hydraulic ram is used to push the cover strip down the length of the edge of the electrode plate. The retaining strips steer the cover strip, keeping it in correct alignment as it slides along the plate and preventing it jamming too far onto the plate or riding off in the other direction. Once installed, the retaining strips are locked in place by the cover strip.]
The height 'G' may be slightly varied; however there is an optimal spacing of electrode plates in the acid bath and a preferred optimal dimension. Height 'G' in conjunction with the inner profile also affects the height of the legs, which cannot be too slender, or they will break.
The height 'F' has a minimum height, to receive the retaining strip, and in conjunction with the outer profile also affects the height of the legs, which cannot be too slender, or they will break.
Opening 'E' must be capable of receiving, and retaining or gripping, a 3mm thick stainless steel plate. Depending on the flexibility of the plastic used, opening 'E' may be slightly varied, as the plate is forcibly inserted.
'Neck' 'H' of the inner profile must also be capable of receiving a 3mm stainless steel plate.
Surfaces 'J' of the inner profile, in use, are forced into parallel alignment against the plate surface, but when not in use may be parallel or slightly tapered, depending on flexibility of the plastic used and the shrinkage after manufacture.
The cover edge strip is extruded during manufacture at approximately 200 degrees Celsius, under high pressure, using an outer die to form the outer profile of the Design Registration and an inner die to simultaneously form the inner profile. The inner die is a shaped bar, which is likely to break during production if it does not have a sufficient cross-sectional area. Therefore, there is a minimum size below which the internal 'open' cross sectional area cannot be reduced in production runs.
Extrusion occurs with the 'legs' open, permitting use of a larger internal cross sectional die during the extrusion process, and relying on the plastic shrinkage as it cools to 'close' the legs. However, this results in a tendency for the legs to 're-open' when re-heated during use, and in a tendency for the corners 'K' at the 'rear edge' of the internal profile to act as a 'hinge' in this opening and closing process, causing the corners 'K' to be areas of stress concentration.
The rear surface of the inner profile, extending between corners 'K', in use abuts the edge of the cathode plate. If the edge of the cathode plate is sharp or burred, damage to the rear surface can occur. [Ms Wadeson argued, at the hearing, that the cathode plates are now laser-cut and have smoother edges, with implications for the shape of cover strips in general. I could perhaps accept the former, but not the latter. This is something on which Mr Perham is completely silent despite having made two declarations in this matter.] Of most critical concern is damage to the corners 'K' of the rear surface, as stress concentration factors are increased by damage such as a cut in the plastic, and the stress already concentrated in this area, in conjunction with a raised stress concentration factor, may result in failure of the edge strip. For example, cracks may radiate from the corners 'K' and result in the leg(s) breaking off.
One method of reducing the stress at the corners 'K' is to provide a larger radius, rather than a sharp radius, as this geometry provides a lower stress concentration factor. Another method is to provide recesses (or 'ears') which can reduce the contact of the plate edge with the corners. [Here I note the still earlier registrations – see appendix - to which Watermark referred the examiner. There is no evidence, however, that such ears have been rendered redundant by improvements in cutting technology, eg laser cutting] Hence, burrs or sharp edges are not in actual contact with the corners and the likelihood of damage when the plate is hydraulically rammed lengthways into the edge strip is reduced.
The cathode edge strip is held in a gripping action by the conveying machinery, and positioned into the acid bath. It is desirable that the shape of the outer profile encourages the series of cathode plates to maintain a relatively parallel orientation, to prevent any of the plates from 'jamming' in the acid bath or against the next plate. A 'rectangular' outer profile would align both with the acid bath walls and the next edge strip, but sharp corners are undesirable and easily damaged. By 'rounding' the corners, the likelihood of damage is reduced and also the amount of material used in the extrusion is reduced.
Discontinuities on the curvature of the outer profile can also result in stress concentrations, bearing in mind that the cathode plate weighs up to approximately 120kgs. Provision of decorative features results in increased costs and increased materials and would therefore have low customer acceptance. Provision of decorative or identifying features such as grooves extending the length of the extrusion would result in a stress concentration, and provision of a ridge results in use of additional material. A 'smooth' or continuous outer perimeter provides the best strength to material ratio.
[I note from Mr Perham’s earlier declaration that the acid bath previously mentioned is at a temperature of 65 degrees Celsius, and that the plate and copper assemblage is subsequently washed in water at 85 degrees]
27. The registration of the earlier design is as follows:
28. The registered design is, for convenient reference, set out again as follows
29. Ms Wadeson argued that this was something of a constrained field. For the purpose of s 19(2)(d) there was, she said, little freedom of the designer to innovate. This was restricted by functional limitations which dictate various measurements and proportions of the design.
30. The concept of ‘freedom of the creator of the design to innovate’ derives from the 1991 EC Green Paper “The Legal Protection of Industrial Designs”. The relevant text is as follows:
5.5.8.3. The second provision endeavours to express a guide-line for the judge in order to cater for the extraordinary variety of cases that the design legislation is going to govern. The provision expresses the principle that, the more limited the freedom of the designer is in developing his design due to technical or marketing constraints (standardization, mechanical or physical constraints, necessity of taking into account deep-rooted marketing requirements by the clients, features imposed by fashion), the more weight has to be given to small differences or variations as constituting an independent development. The judge can expect the “relevant public” in this situation necessarily to give a more careful consideration to the details which make up the difference between two similar products.
5.5.8.4. On the other hand, where the freedom of the designer is unconstrained large and the design represents something substantially new and immediately perceived as such by the relevant public, designs representing quite a wide range of alterations or variations could be considered as infringing, because the strong personal character of the new design inevitably commands an overall impression of a substantial similarity, even if the differences are quite easily noticed.
Conclusion
31. While at first approach it can be seen that there is a great deal of similarity in the overall visible resemblance, I think that in the present case it is necessary to focus on the inner features, to which the statement of newness and distinctiveness draws attention. It is not so much that this statement forces me to such an approach, as that it authorizes it, while the circumstances of the Perham declaration guide the extent to which it is applicable.
32. It is quite true that the registered design is a minor refinement of an existing one, such that, prima facie, revocation might seem appropriate. Further, the refinement is dictated solely by clear practical and functional principles. However, that alone is not fatal to the registration once it is also noted that this is a field where shape is limited and functionality is paramount. That functionality mandates stress-relieving of sharp internal corners and minimal interference with the shape of the outside of the cover-strip, which is, more generally, proportioned to give maximum strength for minimum material usage. Given the clear and convincing evidence of Mr Perham, it seems more likely than not that Icon’s new design would, in day to day use, be readily distinguished from its own earlier design by reference to the internal shape. In saying this, I do not mean that, through repeated exposure, a reasonably informed user would come to learn to tell one from the other. Such a low threshold is inappropriate in principle and is in the present case expressly not my assessment of how a reasonably informed user would react. I think that, in practice, such a person’s reaction would be more immediate. A reasonably informed user, aware of the subtleties around the making of such cover strips, would immediately note the differing visual impact of the inner shape and react accordingly.
33. True it is that the quantum of difference between the registered design and the earlier design is small but this quantum is a significant identifier in a field where such things count for much. Despite the lack of obvious ears, as Mr Perham called them, in either design, it may still be said that in the rounding of the corners there is sufficient for ready identification of the two overall impressions. Therefore they are not, in terms of the legislation, “substantially” similar.
34. I am, as a delegate of the Registrar of Designs, mindful that that the clear intention of the system put in place by the present Act was to result in a more robust system for the better protection of designs from similar ones[4]. I fully accept that this should lean against too ready an assumption of distinctiveness for the purposes of s 16(2) and I have approached the matter accordingly. In particular, it will be observed that I have not used the quantum of difference between the earlier registrations shown in the appendix as any sort of guide to what might be appropriate under the new legislation. My observation is that such a comparison is likely to prove a false guide to the higher threshold that it is appropriate for delegates to apply under the new legislation. However, for the reasons set out above, I am unable to arrive at the conclusion that the two designs are substantially similar in overall impression.
[4] See ALRC report at 1.2, 2.46
35.
Accordingly, I am satisfied that the present design is new and distinctive compared to the cited prior art. I direct that examination of this design be taken as 'completed' pursuant to s 65(3), and that the provisions of s 67 now apply.
Hearing Officer
5 July 2007
Appendix: Earlier registered designs, noted in the Watermark submission.
154192 113854
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