Manitowoc Foodservice Companies LLC
[2012] ADO 3
•1 November 2012
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration No. 335222 in the name of Manitowoc Foodservice Companies LLC. and examination thereof.
| Delegate: | Debrett Lyons |
| Representation: | Owner: Wayne Slater of IP Gateway, Patent and Trade Mark Attorneys |
| Decision: | 2012 ADO 3 |
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 no. 335222 (‘the Registration’ and the design disclosed therein as ‘the Design’).
Following examination, the Design was found not to be distinctive because it was said to be substantially similar in overall impression to a design published in a document before the priority date of the Registration.
The Owner asked to be heard and was represented at the hearing, which took place in Canberra on 5 June 2012, by Wayne Slater of IP Gateway, Patent and Trade Mark Attorneys.
Examination
An application was filed under the Designs Act 2003 (“the Act”) on 4 February 2011 claiming Convention priority from US Design Paten 29/367, 235 filed 4 August 2010 (the ‘Priority Date’) to register the Design shown below in relation to a product described as “An Icemaking Machine”.
The Design was duly registered and the Owner requested examination under section 63(1) of the Act on 8 April 2011. An examiner was appointed to determine whether the Design was new and distinctive when compared with material in the public domain before the Priority Date.
A first examination report dated 20 June 2011 alleged that the Design 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 (the ‘Prior Disclosure’) and registered by what appears to be a company related to the Owner, Manitowoc Foodservice Group Inc. An image of the Prior Disclosure is shown below.
In essence, the Design differs from the Prior Disclosure in two ways – by the addition of a temperature control panel to the face or door of the machine and by alteration of the laterally disposed ventilation ribs such that the ribs are curved.
The issue is whether or not the Design is substantially similar in overall impression to the Prior Disclosure.
Legislative framework
Under section 65(2)(a), examination requires the Registrar to consider whether the 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. In his submissions, Mr Slater systematically considered the influence of section 19 and it is convenient to first look to his choice of the informed user, an important term of art in the legislation since, when I consider those factors listed in section 19 which might influence the overall impression of the compared designs, I must apply the standard of that notional person.
The informed user
13. Mr Slater submitted that an ice making machine sells for several thousands of dollars and I have no reason to question that statement. He said that the machine would typically be used in bars, restaurants and hotels and, again, I accept that statement.
14. Following the hearing I allowed the Owner time to obtain and submit statements from what it regarded as informed users, there having been no evidence of that kind before the Office. I was later provided with declarations from a Mr Antony Van Der Drift and a Mr Paul Alldridge.
15. For the past 12 years, Mr Van Der Drift has been the manger of Gotzinger Smallgoods Pty Ltd in Queensland, a company which makes and sells a wide range of European smallgoods. Its customers include Woolworths and IGA supermarkets as well as wholsesale food distributors. Mr Van Der Drift declares that ice making machines are integral to his company’s food production.
16. I regard Mr Van Der Drift as falling within the class of informed users of ice making machines of the kind shown by the Design and I have taken cognizance of what he had to say, described later.
17. Mr Paul Alldridge is an employee of ERS Catering Equipment in Queensland, a business which he declares both rents and sells commercial catering and kitchen equipment Australia wide. Mr Alldridge is a sales consultant and technical assistant. He states that ERS Catering Equipment rents or sells approximately 30 ice making machines annually. He declares that he is personally involved with each sale and has a good understanding of the features that ice machine purchasers would consider important.
18. Mr Alldridge is not himself a user of ice machines. Doubtless, he is informed about ice machines and in his capacity of a technician he may even be credited with specialist knowledge of them. These qualities are not those which have been attributed to an informed user. However, his experience as to what purchasers would consider important is helpful in assessing the informed user standard.
19. I consider Mr Alldridge to be an expert and that precludes his personal views as to the significance of visual features from educating me on the standard of the informed user. Nevertheless, I can take account of certain matters in his declaration. I have already accepted that ice machines are pieces of expensive equipment. Many ice machine buyers would be people like Mr Van Der Drift who fall within the class of people that might be considered informed users of this product. I have no reason to question Mr Alldridge’s statement that he has a good understanding of the features that those people consider important and to the extent that his declaration might be seen to represent the opinions of his customers I can give it some weight. The evidence might be indirect and might offend the hearsay rule were this matter before a Court however in this Tribunal I can give relevant statements the weight they deserve. It is also open to me to consider other factual statements made by Mr Alldridge that are of potential relevance.
The evidence
20. Mr Van Der Drift’s declaration is tainted to some degree by the fact that his company appears from the declaration to purchase and use ice making machines made by the Owner. Mr Van Der Drift declares that his company owns and uses a machine which corresponds with the Prior Disclosure and that he is familiar with that machine. He declares that “his immediate impression is that the [D]esign is for an ice making machine model that is a different to the Prior Disclosure.” Adopting the language of section 19 he declares that in his opinion there,
are fundamental differences in the overall impression of the [designs] …the most apparent difference to me is the fins. Although both designs have fins on the side wall, this is a common feature to ice machines and accordingly I do not consider this similarity to be of any importance.
21. He goes on to observe however that whilst the fins of the [Prior Disclosure] are flat, those of the Design are curved,
which to me is an obvious difference and influences my overall impression of the two designs as being different.
…
A further difference between the design and the [Prior Disclosure] is the presence of the controller on the front of the design. My attention is particularly drawn to the controller. … Even 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].”
22. Mr Paul Alldridge declares that in his experience,
…each brand of equipment is readily identifiable by users of that machine. Thus, equipment manufactured by particular manufacturers generally has some commonality in appearance to allow them to be readily identified as being of that brand. For example, a chef can walk into a foreign kitchen and immediately recognize the brand of the stove/griller/etc. Further, within that brand, each series will have its own identifiable appearance … In my experience, when a particular manufacturer introduces a new model or series, the overall appearance of the product is designed to indicate a distinct, although sometime subtle, difference from the previous series.
…
Ice machines are typically modular in that they are mounted over a storage bin. This enables optimum versatility in matching a desired production machine with a suitable storage bin and enables production machines to be changed or updated.
23. Mr. Alldridge goes on to declare that in his experience all ice machines are “a rectangular box shape” and that “the majority of ice machines also have cooling fins mounted to the side of the machine.” He gives evidence that ventilation fins are generally “flat” (by which I assume that both he and Mr Van Der Drift mean, straight).
24. Also provided along with this post-hearing material by the attorneys for the Owner was a photograph of the actual ice making machine according to the Design (the representations to the Registration all being line drawings).
Findings
25. 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.
26. 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.
27. 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.
28. 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.”
29. 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.
30. 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.
31. 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.
32. 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.”
33. What looked to me at first to be a contradiction in Mr Van Der Drift’s declaration in fact makes sense against the backdrop of the state of the prior art already discussed. I place some weight on the evidence of Mr Van Der Drift that the arcuate fins of the Design would form an impression of difference on an informed user.
34. For that reason I can put aside the photographic material sent to me after the Hearing since in the accompanying submissions it was explained to me that its intention was to draw out the visual significance taken on by the arcuate fins when seen in reality and not merely as shown in the line drawings of the Design representations. Nor for that same reason do I need to return to consideration of what was said in the case of Sportservice Pty Ltd [2007] ADO 6 (10 October 2007).
35. 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.
36. 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.
37. 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..
38. 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.
39. It is for these reasons and having particular regard to section 19 that I find that the Design is distinctive within the meaning of section 16(2) and is therefore a registrable design for the purposes of section 15(1) of the Act.
Decision
40. Examination of this Design is to be taken as completed pursuant to section 65(3) of the Act. The provisions of section 67 now apply.
Debrett Lyons
Hearing Officer
Design Hearings
1 November 2012
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