Invacare Corporation
[2013] ADO 4
•23 August 2013
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 339334 in the name of Invacare Corporation and examination thereof
| Delegate: | Debrett Lyons |
| Representation: | Owner: Jeremy Dobbin of F. B. Rice & Co., Patent & Trade Mark Attorneys |
| Decision: | 2013 ADO 4 Section 63 request for examination: design new but not distinctive; broken outline practice considered; registration to be revoked. |
Background
Invacare Corporation (the ‘Owner’) is the owner of Design Regn. No. 339334 (the ‘Registration’ or the ‘Design’ as the context requires) filed on 19 September 2011 and claiming under regulation 3.06 a priority date of 28 March 2011 (the ‘Priority Date’) for a product described as “Wheelchair chassis”, carrying a statement of newness and distinctiveness (the ‘SOND’) which reads:
“Newness and distinctiveness reside in the features of the design shown in solid lines in the representations excluding those features shown in broken lines”.
At the request of the Owner the Registration was examined and an examination report dated 30 January 2012 raised grounds for revocation. The examiner reported that the Design was not new or distinctive because it is substantially similar in overall impression to disclosures in the prior art base, namely, the Owner’s earlier registrations AU 336950, AU 336927, and AU 336909, also concerned with a wheelchair chassis design.
The Owner asked to be heard when the Office did not appear to have altered its position on the newness and distinctiveness of the Design.
A hearing took place in Canberra on 3 June 2013 at which the Owner was represented by Jeremy Dobbin of F. B. Rice & Co., Patent and Trade Mark Attorneys.
I note here that prior to the hearing the Owner had filed a request to amend the product name to “Front frame of wheelchair chassis” and that, at the time of the hearing, that request had not been actioned.
Legislative framework
Under section 65(2)(a), examination requires the Registrar to consider whether the Registration should be revoked because it is not a registrable design. Section 15(1) of the Act states that 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.
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 and section 16(2) states that:
A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.
Section 19 elaborates on substantial similarity:
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).
Submissions and Reasoning
The representations of the Registration are shown in Appendix A hereto. In general terms, the bulk of the wheelchair chassis is shown in broken lines; it is only the front caster arms which are shown by solid lines.
10. The three prior art design registrations show a common wheelchair chassis in various states of broken line and hard line, varying from one registration to the next. In the Owner’s words “the cited designs essentially protect different components of the same wheelchair.”
11. The Owner went on to submit that:
“[L]ogically, the focus of the comparison must be between the front castor support arms and support tube of the subject registration and the front castor support arms and support tubes of the cited design. The disclaimed parts are to be ignored or at most given little weight. … It is submitted that a comparison of the subject registration with one of the cited designs (e.g. AU 336909) is sufficient to decide the matter.
12. I agree with the Owner’s submission that the Registration need only be compared with one of the cited designs in order to reach a decision and the representations of Registration 336909 (the Owner’s selection) are shown in Appendix B hereto. The requirement of section 15(2)(c) is merely that of disclosure of the design – not that the disclosure necessarily be the subject of the earlier design – and so there is no cause to examine in any sense the individual monopoly rights of the prior art as they make the same disclosure.
13. For reasons which will emerge, I disagree with the Owner’s submission that “the disclaimed parts are to be ignored or at most given little weight” and I disagree with the conclusory remark that “logically, the focus of the comparison must be between the front castor support arms and support tube of the subject registration and the front castor support arms and support tubes of the cited design.”
14. Comparing the designs, I have no trouble finding that the Design is new within the meaning of section 16. The forward caster arms are discernibly different and that is all that is necessary to meet the threshold of “newness”.
15. The remaining question - whether or not the Design is distinctive, that is, whether or not it is substantially similar in overall impression to the design of registration 336909- is to be determined having primary regard to section 19 and in that respect the first matter which arises for consideration is that of the proper comparison to be made bearing in mind the use of broken lines in the Registration.
16. The Owner submitted that:
The design focuses on the front chassis of a wheelchair, specifically the front castor support arms and castor support tubes. All other parts of the wheelchair are shown in dashed lines and by design drawing convention serve only to provide a context for the actual design. This is reinforced by the statement of newness and distinctiveness.
…
As identified in the Statement of Newness and Distinctiveness, this design is for the features shown in solid lines in the representations and excludes the features shown in broken lines (which are … by convention disclaimed and form no part of the design. Thus the subject design is for the front frame portions of the wheelchair chassis (the front castor support arms and tubes) which project from the shroud/body of the wheelchair base and which are the only parts shown in solid lines. The rest of the wheelchair chassis shown in dashed lines is only provided for the purpose of setting the context of the design.
The Manual
17. The use of broken lines, dashed lines, coloured rinse, and other similar practices are not legally controlled or legislated for. Instead, they are conventions which have been adopted across jurisdictions and over a long period of time, arching in many cases over the passage of successive design laws.
18. IP Australia’s Designs Examiners' Manual of Practice and Procedure (“the Manual”), for example, states at D04.5
Dashed v solid lines
A common situation involves some elements of the representations being shown in solid lines, while other elements are in broken (dashed or dotted) lines. Broken lines are frequently used to indicate things such as:
·elements of the product other than those bearing the visual features of the design;
·boundaries (e.g. of a pattern applied to part of a surface);
·stitching;
·perforations;
·hidden elements (typically in perspective views);
·features that establish an environmental context;
·features outside the scope of the design …
19. The Manual goes on at D04.5 to state:
In all instances, the examiner needs to interpret the representations in the context of the design as a whole, applying a presumption that differences in the manner of representation of features is for a purpose, and make this assessment in the context of the standard of an informed user.
20. Interpretation of the representations in the context of the Design as a whole in turn requires consideration of any written statements about the way the Design is to be understood. The Designs Act 2003 (“the Act”) introduced the so-called “statement of newness and distinctiveness” as an optional element of the design application. Section 19(2) of the Act requires the decision maker to have particular regard to those features included in a statement which identify particular visual features of the design as new and distinctive.
21. The SOND may be drafted in various ways. So, in this case for example, the SOND states that newness and distinctiveness reside in the features of the Design shown in solid lines in the representations excluding those features shown in broken lines (added emphasis).
22. The Manual goes on at D04.6 to explain that section 19(2)(b) of the Act has its origin in recommendation 50 of the Australian Law Reform Commission, Designs, Report No 74 (1995) which stated at [6.21]:
Where a visual feature that is claimed to be new and distinctive relates to only part of the product, the court should pay particular attention to that part of the product but only in the context of the whole of the product. The ALRC gave the following example:
… if a cup is designed with a new and distinctive handle, the design owner will be able to register the design of the cup and identify the handle as the new and distinctive feature for which protection is sought. If a competitor takes the handle and places it on a differently shaped cup, the court will be directed to consider when determining whether the exclusive right has been infringed whether the design of the new cup is substantially similar in overall impression to the design of the old cup, paying particular attention to the designs of the handles in each case but not disregarding other parts of the cup. The design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.
23. The Manual expresses it thus:
“to understand the effect of a Statement of Newness and Distinctiveness, it is important to understand that a statement does not derogate from the need to assess distinctiveness of the design in the context of the overall impression of the product bearing the design. For example, if a visual feature is insignificant in the overall impression of the product bearing the design, specifying that feature in a statement does not alter that fact … Where the statement identifies features that relate to only part of the design, distinctiveness is assessed having particular regard to those features – albeit in the context of the design as a whole [s.19(2)(b)(ii)]. In this situation, the statement functions to distinguish between the visual features of the design, and features that are generic to the product. That is, such a statement may result in the design being of broader scope than might otherwise be the case.
The Product
24. The first task is to examine, for the purposes of interpretation and prior art comparison, the Owner’s request on 20 July 2012 to amend the product name from “Wheelchair chassis” (as filed and registered) to “Front frame of wheelchair chassis”.
25. The Owner did not provide a legislative basis for its request to amend the name of the product. Section 66 provides for amendment requests during examination. A pre-requisite to the making of an amendment under that provision is the Registrar’s finding that a ground of revocation exists. The examiner made such a finding.
26. Section 66 amendments are limited to matters relating to the registrability of the Design which, for the purposes of this matter, means that an amendment must relate to matters affecting the newness or distinctiveness of the Design. It is therefore my task to assess the request in terms of its conformity with the requirements of section 66(6)(a) which states that an amendment must not be such as to increase the scope of the design registration.
27. Putting to one side for the moment the significance of the dotted lines and treating all lines as hard lines, I consider that the representations show a wheelchair chassis. The Macquarie Dictionary defines “chassis” to mean “the frame, wheels, and machinery of a motor vehicle, on which the body is supported.” That seems to be precisely what is shown for a wheelchair.
28. I do not think that representations as a whole show a front frame for a wheelchair chassis. There is no identifiable front frame. What can be seen at the forward end are front caster wheels, front axle parts, partially visible front caster arms, portions of general housing (obscuring from view actual detail of framework or of interconnectivity of the proximal ends of the caster arms therewith) and a foot platform.
29. In my assessment the requested amendment is impermissible under section 66(6)(a). It is a request that necessarily seeks to increase the scope of the Registration. In any event, for reasons given shortly, it is not an amendment affecting the distinctiveness of the Design in a manner which overcomes the ground for revocation.
The Design
30. It is decided that the product is a wheelchair chassis. The next task is to understand the relationship between the product, the SOND and the representations (this time taking account of what is imported by the use of dotted lines).
31. There is a necessary connection between the SOND and the representations. The representations might, taken alone, be interpreted in keeping with convention and bearing in mind what has been extracted above from the Manual. The SOND, on the other hand, can in this instance only be understood with the assistance of the representations. Once the two are understood together it might not be necessary to use dotted lines at all were it completely free of ambiguity to restate the SOND in, for example, the following way:
“Newness and distinctiveness reside in the shape and configuration of the front caster arms only”.
32. This being a case where the SOND identifies features that relate to only part of the Design, the Act directs that distinctiveness be assessed having particular regard to those features, taking account of those features in the context of the Design as a whole.
33. However I do not consider that to be a complete statement of principle. I have already cited the Australian Law Reform Commission cup handle example which concluded with the statement that “the design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.”
34. If the present SOND is read in strict conjunction with the representations then the only elements of design interest to the Owner are the front caster arms. There is probably little doubt that those parts of the wheelchair chassis are a component part of the whole product within the meaning of the Act (see section 6(2) and the definition of a “complex product” in section 5) but that of itself does not wholly satisfy the ALRC example since in this case the Design is not registered for that component part.
35. I would suggest that the complete teaching of the Act might be that, depending on the case, distinctiveness is assessed having particular regard to visual features flagged by the SOND, taking account of those features in the context of visual features of the product as a whole. That suggestion is in my view consistent with section 8 of the Act which states that “in this Act, a reference to a design is a reference to a design in relation to a product”; further, that a design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product; and finally, section 19(4), which requires application of the standard of the informed user, being a person who is familiar with the product to which the design relates.
36. The Registration is not for a “Caster arm”, nor even a “Caster arm for a wheelchair chassis”. I must assess the distinctiveness of the wheelchair chassis as shown having particular regard to the front caster arms and bearing in mind the freedom of the creator of the design to innovate but having regard also to the size, quality and importance of those caster arms when compared with the features disclosed in the prior art.
37. Treating design registration 336909 as representative prior art, the Owner submitted that:
It seems that it is possible that, in raising the objections raised in the Design Examination Report dated 30 January 2012, the Examiner may have mistakenly made a comparison between two wheelchair chassis which as a whole are quite similar apart from the front castor arms, rather than making the correct comparison which is between the castor support arms and tubes of the subject design registration and the prior art.
38. To my mind the Examiner did exactly that but in so doing did not make a mistake. Bearing in mind then the Owner’s admission that when the wheelchair chassis are compared they appear quite similar ( I would say, very similar) then the only remaining submissions of possible assistance are that:
The shape and configuration of the castor arms themselves are clearly different. In all views, there is a clear and perceptible difference in appearance between the two designs …. To summarise those differences, the front support arm of the subject chassis extends from the shroud at a different angle and extends much further forward than that of the cited prior art. The front castor support arms of the subject design are longer than the front castor support arms of the cited prior art. Also, the front castor support arms of the subject design are generally straight and meet the wheels at an angle of around 45% when the wheels are pointing in a forward direction. In contrast, due to the distinctive curvature of the front castor support arms of the prior art, the tubular portions of the support arms of the prior art meet the wheels at an almost perpendicular angle, perhaps 10 to 15o from the perpendicular. Key differences are that the castor arm is straighter than the prior art, and at a different angle which results in the wheel of the wheelchair being placed further forward.
39. In relation to the designer’s freedom to innovate, the owner’s submissions were that:
Where the overall appearance is dictated by external factors over which the designer has no control, it is appropriate to assess newness and distinctiveness on the basis of factors which are under the designer’s control.
There are clearly functional and other limitations placed on the design of the castor support arms, given that they needs to enable the front castors to be placed distal from the body of the wheelchair chassis and in a position in which the wheelchair is stable and can be steered accurately using the rear wheels. They must be strong enough the bear the weight of the front of the chassis and whatever is carried on the chassis sharing the weight with the rear wheels. Generally axles and wheel supports will be cylindrical or annular in cross section as this provides the best strength and resistance to bending compared to e.g. a square cross-section. The size and thickness of the tubing will be dictated by the weight it has to bear.
A castor has an upwardly extending cylindrical rod about which vertical axis the castor pivots. Hence a vertically extending cylindrical housing for that tube is a natural choice. The front castor support tube will tend to be a particular size and shape and in order for it to provide a strong fit to the castor support arm should be at least the same size and preferably slightly wider than the support arm, as shown.
A castor arm has an inherent shape in that it will be generally elongate and at one end have a support tube/housing for a castor.
So the freedom of the designer is effectively limited to the shape and length of the castor arm and in the angle at which is extends from the chassis body.
40. Section 16(2) refers to substantial similar in overall impression and paragraph D09.3 of the Manual provides a reminder that the Macquarie Dictionary defines ‘impression’ as, inter alia, “the first and immediate effect upon the mind in outward and inward perception”. Nonetheless, the impression is that which is gained by an informed user whose sensibilities might be influenced by particular aspects of a product, such as those where design freedom is limited, or where attention is particularly directed.
41. I underscore here the additional learning of the Manual at D09.3 where it is said that:
“the reference to overall impression requires consideration of the product as a whole, and not just that part of the product bearing the particular visual features of the design. For example, a change of detail in a small innocuous visual feature on a large product might have no effect on the overall appearance of the design.”
42. So, in Reckitt Benckiser (UK) Ltd [2008] ADO 6, the Hearing Officer concluded:
“In my view the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product.
43. The Act requires me to stand in the place of an informed user and to give more weight to similarities between the designs than to differences between them. I must then pay particular regard to the SOND which tells me that distinctiveness resides in the shape and configuration of the front caster arms, but I must have regard to the design (or, as I suggest, the product) as a whole and consider the size, quality and importance of that part in the context of the design (or product) as a whole.
44. Whilst I would not go so far as to characterize the front caster arms as bearing “a small innocuous visual feature on a large product”, I remain conscious that the Manual states quite well that:
“… a product might have many features in common with a competing design, with one feature that is different. If an informed user considered all those features to be of equal significance, and the one feature of difference to be not particularly noteworthy to the overall impression, weighting the similarities greater than the differences would lead to a conclusion that the designs were substantially similar in overall impression. On the other hand, if the informed user considered the feature where the difference occurred was a particularly important feature in forming the overall impression, that feature would thereby have an increased weighting which may outweigh the combined weighting of all the features in common.”
45. I have been provided with reasoned submissions but not with the direct evidence of an informed user. Much of the submissions point to differences in detail without convincing me that an informed user would regard those details as materially affecting the overall impression. There may indeed be technical limitations as to how much design freedom exists in relation to mechanical links such as caster arms, or indeed to those visual features that are shared between the Design and the cited designs but (in the absence of any direct evidence) I am not persuaded that those possible limitations would cause an informed user to conclude that the overall impression of the designs was different.
46. I do not find that the Design is distinctive when compared with the prior art.
Decision
47. My decision in this matter, which now completes examination, is that the Design is new but not distinctive. I order that the Registration be revoked.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
23 August 2013
Representations of AU 339334
Representations of AU 336909