Manitowoc Foodservice Companies LLC.
[2013] ADO 2
•24 May 2013
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration Nos. 338258 and 338260 in the name of Manitowoc Foodservice Companies LLC. and examination thereof.
| Delegate: | Debrett Lyons |
| Representation: | Owner: Alison McMillan of IP Gateway, Patent and Trade Mark Attorneys |
| Decision: | 2013 ADO 2 |
Background
This matter came before me because Manitowoc Foodservice Companies LLC. (‘the Owner’) had requested to be heard in relation to matters raised during examination of its design registration nos. 338258 (‘Design A’) and 338260 (‘Design B’) (together, ‘the Designs’ or ‘the Registrations’).
Following examination, the Designs were found not to be distinctive because they were said to be substantially similar in overall impression to design(s) published before the priority date of the Registrations.
The Owner asked to be heard and was represented at the hearing, which took place by telephone on 4 March 2013, by Alison McMillan of IP Gateway, Patent and Trade Mark Attorneys.
Examination
Applications were filed under the Designs Act 2003 (“the Act”) on 1 August 2011 claiming, in the case of Design A, Convention priority from US Design Patent 29/385,247, and in the case of Design B, Convention priority from US Design Patent 29/385, 259, both filed 10 February 2011 (the ‘priority date’) to register the Designs shown below in relation to products in each case described as an “Ice Machine”.
Design A
Design B
The Designs were duly registered and the Owner requested examination under section 63(1) of the Act. An examiner was appointed to determine whether the Designs were new and distinctive when compared with material in the public domain before the priority date.
First examination reports issued on both Designs on 21 November 2011. The examiner alleged that Design B was not new and distinctive in view of United States Design Patent No. D394,270 issued 12 May 1998 also for an ice making machine (‘Prior Disclosure A’) and registered by what appears to be a company related to the Owner, Manitowoc Foodservice Group Inc. An image of Prior Disclosure A is shown below.
Prior Disclosure A
The examiner alleged that Design A was not new and distinctive in view of Prior Disclosure A and Australian Design No. 335222 (‘Prior Disclosure B’), shown below.
Prior Disclosure B
The issue is whether or not the Designs are substantially similar in overall impression to the prior disclosures.
Legislative framework
Under section 65(2)(a), examination requires the Registrar to consider whether a registration should be revoked because it does not relate to 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.
10. 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.
11. 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
12. It is of relevance to the submissions and reasoning in these matters to recapitulate the facts and outcome of a case which came for my consideration last year involving this Owner and its earlier efforts to protect this same type of product by way of design registration.
13. The case[1] arose from a request for examination of Prior Disclosure B, also for an ice making machine, against which an examiner had cited Prior Disclosure A. In essence, Prior Disclosure B differed from Prior Disclosure A in two ways – (i) the addition of a temperature monitor panel on the face or door of the machine, and (ii), laterally disposed ventilation ribs that were curved rather than straight.
[1] Re: Design Registration No. 335222 in the name of Manitowoc Foodservice Companies LLC. and examination thereof. 2012 ADO 3 ( 11 November 2012)
14. Following a hearing I allowed the Owner time to obtain and submit statements from what it regarded as informed users. It did so and after consideration my decision was to order that a Certificate of Examination be issued. In that case I found the evidence of a Mr Van Der Drift persuasive.
15. I wrote in that decision:
Section 19 requires me to stand in the shoes of someone like Mr Van Der Drift and ask whether the designs are substantially similar in overall impression whilst giving more weight to their similarities than to their differences.
That is not to say that I must note by number all the similarities and differences and make an arithmetic tally. Instead, qualitative considerations play a vital role and section 19 directs me to have regard to a number of factors including the state of development of the prior art base for the design; whether the Registration includes a statement of newness and distinctiveness (“SOND”) identifying particular visual features of the design as new and distinctive; and, if part of the design is substantially similar to another design, to have regard to the amount, quality and importance of that part in the context of the design as a whole. Finally, I should take account of the innovative freedom of the designer.
I note that the Registration carries a SOND which reads:
The newness and distinctiveness of the design resides in the visual features of shape and/or configuration of AN ICE MACHINE as shown in the accompanying representations.
There is nothing exceptional about the Design representations and so I treat the SOND as having the same influence on my assessment as would the absence of a SOND, noting section 19(3) which states that “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.”
There are certain matters concerning the state of development of the prior art base which, on the evidence provided, I accept. The shape and configuration of ice machines as they had evolved to the point they stood at the Priority Date points to certain uniformities including a shape and configuration generally being that of a rectangular prism, they have laterally disposed ventilation and they have a front facing door.
To a greater or lesser degree, those uniformities are representative of the limits of a designer’s freedom to innovate. So, for example, it has already been noted in Mr Alldridge’s evidence that ice machines are coupled with other apparatus, typically bins, not necessary coming from the same maker, and must reciprocate with that other apparatus in order to work. So, too, it seems a matter of common sense that most designs of ice making machines will be constrained by the practicality of a front facing door of some kind and ventilation grills which either will be on the sides or rear of the unit.
Finally, in terms of the section 19 direction that “if part of the design is substantially similar to another design, to have regard to the amount, quality and importance of that part in the context of the design as a whole”, then the state, generally, of the prior art is of machines which approximate each other in these ways and so, too, when I came to compare the Design with the Prior Disclosure, my assessment of the quality or importance of the similar features requires a contextual appreciation of the body of art from which the compared designs have emerged.
Turning then to an assessment of the likely impression on the informed user of the ventilation ribs I reiterate Mr Van Der Drift’s statement that side wall fins are “a common feature to ice machines and accordingly I do not consider this similarity to be of any importance” but also that the curved fins of the Design “is an obvious difference and influences my overall impression of the two designs as being different.”
…
On the other hand, a case which deserves my particular attention is Astra/Zeneca AB [2007] ADO 4 (5 June 2007) which includes discussion relevant to the question before me concerning the importance to be accorded to the temperature control panel on the front of the Design. In particular, it can be said that the visual impact of that panel is low in purely quantitative terms but Mr Van Der Drift has said that his “attention is particularly drawn to the controller.” Presumably that is so not just because its presence is marked out against the contrast of an otherwise utterly plain rectangular frame of the front door, but also because of his expectation of its likely functionality.
Section 7(2) of the Act states that “[A] visual feature may, but need not, serve a functional purpose” and so there is no bar in the legislation to functionality per se but the question which is left open is how to gauge the impact of that functionality in applying the standard of the informed user.
In Astra/Zeneca AB, Hearing Officer Herald wrote:
The relevant approach is to assess the standard of the informed user as of the priority date … If the informed user's assessment is affected by an expectation of functionality, the fact that such functionality may not actually exist is not relevant. In this case, the question is: would the informed user's attention be drawn to the indicator on the end? If the user would look there in the expectation that there is a useful indicator present, that is sufficient. In particular, it does not matter whether or not the indicator would function. If the user's attention is particularly drawn to that feature, that fact alone is sufficient to indicate the feature as being one of importance (in the Designs context). … In this case the owner has provided several declarations from relevant users that indicate their attention would be drawn to this feature. My own assessment similarly is that users' attention would be drawn to the feature - because of its potential functionality. Accordingly, in the context of s.19(2)(b), and applying the standard of an informed user, this feature would have greater relative importance with respect to the remaining parts of the design than would otherwise be the case..
Astra/Zeneca AB concerned an inhaler device for asthma sufferers that included an element which indicated the number of remaining “puffs”. Apart from this single additional feature, the inhaler was identical to the cited prior art in that case. In the present case there are other differences which I have mentioned. Moreover, much of the similarity between the Design and the Prior Disclosure appears constrained by the industry standardisation discussed above [at 29-30]. Mr Van Der Drift’s statement that “[E]ven without the curved fins, the feature of the front controller indicates to me that the design is sufficiently different in overall appearance and is therefore a different model of ice machine to the [Prior Disclosure]” is to be treated with caution because if the controller indicates to him a different model then its presence goes more to newness than it does to distinctiveness. On the other hand, I have every reason to think that the informed user would treat the controller as visually more important than the shape of the fins. In my application of the standard of the informed user, I would consider that the controller has a significant impact on the overall impression such that the Design is distinctive over the prior art.
16. The Registrations before me now have essentially the same SOND as I considered before, in each case reading:
Newness and distinctiveness of the design resides in the visual features of shape and/or configuration of an ice machine as shown in solid lines in the accompanying representations.
17. The views of Design A shown above make it clear that the monitor panel on the front face or door of the machine is represented in broken lines. The views of Design B are less clear in that respect but, at the hearing, it was the Owner’s premise that that monitor panel was shown in broken lines (or at least was not shown in solid lines).
18. With regard to Design B, the Owner submitted that the combined effect of the broken lines and the SOND left the shape of the ventilation fins as the only point of difference between Design B and Prior Disclosure A. I would agree.
19. The Owner then sought to persuade me that:
As a general statement ice machines have vents and therefore the existence of vents in both of the designs is not decisive. Rather regard must be had to the clear and profound differences in the designs of the two vents as outlined above. Put another way in a field of design where vents are present in all machines, a difference in a design of the vents can contribute to a different overall impression.
20. I was asked to take into account section 19 factors including the degree of freedom of the designer to innovate, constrained, it was said, by the facts that ice making machines are by necessity of a rectangular prism shape and the only practical place for ventilation means is on the sides.
21. I was also asked to consider photographic representations not previously seen of the actual article incorporating Design B and it was said that I should consider the visual impact of the arcuate fin design having regard to those photographs, bearing in mind the earlier decision of this Office in the case of Sportservice Pty Ltd (2007) ADO 6.
22. In short, I do not find those arguments compelling. Whilst I agree that the difference in the shape of the ventilation ribs or vents is clear, I would not describe it as “profound” either of itself, or in the context of the whole product. Nor do I consider that the generally consistent shape of ice making machines or the logistical reasons for lateral placement of ventilation means raises the level of the distinction to a point where it overtakes the otherwise substantial similarity in the overall impression to the two designs. Whilst Mr Van der Drift certainly took note of the difference in fin shape, in the matter demanding his consideration, the controller was the primary point of distinction between Prior Disclosure A and B. Finally, in relation to the photographic material produced for the hearing, I have recently explained and limited the sometimes liberal reading of the Sportservice case in my decision in Re:Design Registration No. 334543 in the name of Apple Inc. (2013) ADO 1 (3 April 2013).
23. There is no other evidence before me from an informed user pertinent to the comparison of Design B with Prior Disclosure A. There is no evidence that the curved ribs have a different or improved functional value that would cause an informed user to pay them added attention.
24. On balance, I therefore find that the designs under comparison are substantially similar in overall impression and that in terms of section 15(1) of the Act, Design B is therefore not new and distinctive and is not a registrable design.
25. Turning to Design A, I note first that the Owner made the same submissions as just discussed with regard to the citation of Prior Disclosure B. My findings are also the same. For that reason it is unnecessary for me to consider whether or not Prior Disclosure A has bearing on the newness and distinctiveness of Design A.
26. I find that Design A is substantially similar in overall impression to Prior Disclosure B and therefore is not new and distinctive and is not a registrable design within the meaning of section 15.
Decision
27. Examination of the Designs is to be taken as completed pursuant to section 65(3) of the Act.
28. I order that the Designs be revoked.
Debrett Lyons
Hearing Officer
Design Hearings
24 May 2013
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