Nigel Louez Graphic Design Pty Limited

[1989] ADO 3

In the Matter of the Designs Act 1906

‑ and ‑

In the Matter of Application No. 1943/85 in the Name of NIGEL LOUEZ GRAPHIC DESIGN PTY. LIMITED to Register a Design.

DECISION OF THE DELEGATE OF THE REGISTRAR OF DESIGNS:
Background
        Application No. 1943/85 was lodged on 24 July 1985 and seeks registration of a design applicable to an article entitled "COLOUR MIXING BALL".
        The Office issued a first regulation 14 notice on 11 September 1986.  In response, the Attorneys for the applicant, on 21 October 1987, sought to amend the Statement of Monopoly, to include a Statement of Novelty, and to provide replacement representations; they also lodged submissions on the question of registration.  The Office issued further adverse notices and in due course informed the applicant that refusal had been recommended, and that it would be afforded an opportunity to be heard pursuant to sub‑section 24(2) of the Act prior to the Registrar finally determining the fate of the application.  The applicant responded by requesting to be heard, and a hearing was arranged for the Sydney hearings session in March 1989.  The applicant was represented at the hearing by Mr F. Old, patent attorney of Spruson & Ferguson, Sydney.  The author of the design, Nigel Louez, was also present.

The Application
        The application is for a design applicable to an article entitled Colour Mixing Ball.  The proposed amended representations for the application as considered by the Office prior to the hearing illustrate diagramatically different views of a ball, the surface of which comprises 12 pentagonal‑shaped panels.  The panels are shown coloured in 12 different colours.  The colours are identified by way of letters adjacent the views with lead lines directed to particular panels; a legend is included on the sheet associating the letters with specific colours.  Appendix A to this decision is a photocopy of the proposed amended representations sheet.
        The proposed amended statements of monopoly and novelty considered by the Office prior to the hearing were as follows:

"Monopoly is claimed in the pattern and/or ornamentation of a colour mixing ball wherein the pentagonal panels are coloured as illustrated in the representations accompanying the application and when considering the extent of the monopoly the letters appearing on and around the ball are to be disregarded, other than for the purpose of identifying the colours of the pentagonal segments."

"Novelty is claimed in the pattern and/or ornamentation created by the colour of the specific colours applied to the pentagonal panels as illustrated in the representations accompanying the application."

However at the hearing, Mr Old supplied me with what I will call revised statements which are in these terms:

"Monopoly is claimed in respect of the ornamentation of a colour mixing ball having pentagonal panels each of which is of a specified colour as indicated in the representations and in considering the extent of the monopoly the letters appearing in the representations are to be disregarded except insofar as they designate colour."

"Novelty is claimed in the ornamentation of the selected colours applied to the pentagonal panels."

Objection to Registration
        The Office position in respect of the registrability of the design the subject of this application, as reported to the applicant in the regulation 14 notices, can be appreciated from objection 3 of the second notice.  That objection reads as follows:

"The design is not considered to be registrable under the Designs Act. The pattern of the article is not considered to be new or original in the light of a soft toy coloured ball with 12 pentagonal panels which was available to the public considerably earlier than the priority date of this application. The only new or original feature of the article is its colour which on the basis of the precedent available and various texts is not considered, of itself, to comprise the basis of registrability either as pattern or ornamentation. A sample of the soft toy is available for inspection at the Designs Office."

The soft toy ball referred to in this objection has 12 pentagonal panels, which panels are in contrasting colours.  A close inspection of this ball reveals that six colours have been used and thus each colour appears on two non‑adjoining panels.  A comparison of these six colours with those of the design representation reveal that they approximate those identified as A, D, F, H, I and L, i.e. colours spread across the spectrum.  The owner of the toy ball has indicated in a statutory declaration that the ball has been in the possession of his family from sometime prior to 1980 and was purchased in Australia from a normal retail source.
Summary of Applicant's Submissions
        Mr Old referred to the revised statements of monopoly and novelty and drew attention to the fact that ornamentation was the feature relied upon for registrability purposes.  In particular it was the ornamentation arising from the selection of the specified colours and the particular arrangement of the coloured panels as indicated in the representations which, it was submitted, justified registrability as a design.  Mr Old further submitted that due to the particular arrangement of the colours (i.e. colour A panel opposite colour G panel, B opposite H, etc.) there was an effect produced when the ball was viewed, creating a distinctive appeal to the eye.  Mr Old also submitted a number of exhibits intended to show the significance of colour in determining pattern and ornamentation, and how colour can contribute to novelty.  At no stage (including during examination), has the applicant contested the prior use of the toy ball cited by the Office.
Decision
In the Designs Act 1906, design is defined in section 4 in these terms:

"'design' means features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction."

Section 17 of the Act reads in part as follows:

"17.(1) Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design ‑

(a)differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article; or

(b)is an obvious adaptation of a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any other article.

For the purposes of sub‑section (1), account shall not be taken of any secret use."

In order to decide whether the present design satisfies the requirements of registrability, it is necessary to consider the position regarding colour in a design.
        Ricketson in his text "The Law of Intellectual Property (1984) comments as follows about colour in relation to designs:

"[17.4] There is no reference to colour in the definition of design and while it seems clear that colour on its own cannot constitute a design it may still form an element in a design, such as in a particular type of pattern or ornamentation. Its importance, however, as an element in a design will depend upon the nature of the design in question. In Smith, Kline and French Laboratories Ltd.'s Design Application, [1974] RPC 253 Graham J. gave two extreme examples. The first was of certain material with a strong underlying geometrical pattern, offered in a number of basic colours to go with different colour schemes. In such a case, colour would normally play no part in the design. By contrast, in other cases (and here his Lordship quoted the instance of coloured patterns used for the Ishihara test for colour blindness), the proper choice of colours for the different parts of the pattern might be an essential feature of the design. His Lordship's view was that

... colour cannot be ignored, though normally differences in colour are unlikely to be important.  Colour may or may not make a material difference, depending upon the circumstances and nature of the design in question."

I note that Whitford J. in Cook & Hurst's Design Application [1979] RPC at 209 was in agreement with the general observations in the conclusion to the UK Office practice summary and considered that it was a proper approach to judge each application on its merits.
        Graham J., in the Smith Kline and French case (supra), and Whitford J., in the Cook & Hurst case, had cause to consider the registrability of a design involving an element of colour, although given the differing facts those judgments are not, in my view, of great assistance in the present matter.  However it is worth making some observations about the Cook & Hurst case.  The design sought to be registered concerned a football jersey bearing particular coloured striping in certain locations.  Whitford J. commented that "the statement of novelty ought to be limited in this sense : that novelty should be claimed in the features of pattern or ornament consisting in the particular strips of colour applied to the article in the manner shown in the representation".  He concluded that on the basis of a statement of novelty as suggested, registration should not be refused, apparently because he considered that the design created by the particular positioning of the strips in combination with the particular colours "may in fact be held to pass the test".  The test to which he referred no doubt concerned whether a new pattern or ornament had been created due to the location and colouring of the strips.
Appended to the judgement of Graham J. in the Smith, Kline and French Laboratories Ltd.'s case (supra) is a summary of the United Kingdom Designs Registry Office practice relating to the significance of colour in the registration of Industrial Designs. In Re Application by Bourjois Ltd. for registration of a design (reported at 11 IPR 625) I included paragraphs (1), (6) and (7) of that summary and pointed out that those paragraphs also comprised the practice of the Australian Designs Office. It is worth repeating paragraph (7) here:

"7.Conclusion.

It is difficult, if not impossible, to lay down hard and fast rules as to the degree of difference which alteration of colour or colours within a pattern or ornament may impart to a design and each application must be judged on its merits.  For example, the degree of difference may to some extent depend upon the comparative simplicity or complexity of the designs being considered.  However, it may be said that, generally speaking, alteration of colour or colours in a design which is in other respects not substantially different from a prior design would be regarded by the Office as being in the nature of a variant commonly known in the trade and would not in itself impart the substantial novelty necessary to substantiate a valid registration."

It seems to me that the above conclusion correctly summarises the law, and there is no doubt in my mind that the design of the present application is inherently registrable ‑ if novel.
        On this basis I suggested to Mr Old that the design applied for, and the design of the cited ball, on comparison, could be likened to the picture quizzes which occasionally appear in some popular magazines.  These consist of what appears to be two identical line drawings; however one of the two has had 10 alterations made by the artist.  The viewer is invited to locate the 10 points of difference.  There is no doubt that the general appearance of the two pictures to the eye of the viewer is the same.  However, on a close, piece by piece comparison, the points of difference can be identified.  Here, the cited ball and the ball represented in the design application appear to be the same, as they each have a spherical surface divided up into 12 pentagons of equal size, each pentagon being of a single, bright colour.  Upon closer inspection it can be seen that the design of the application uses 12 colours, while the cited ball has only 6, which approximate 6 of the colours of the design.
        Mr Old suggested that the picture quiz I referred to was not a good analogy as a ball to which the design of the application was applied could be considered in the nature of an "executive toy", and therefore more likely to appear to the "eye" to be different from the cited ball.  I have some difficulty with this proposition.
        Firstly, there is no evidence on this matter.
Secondly, as to the question of "whose eye" is concerned with judging the appeal of a design, Lockhart J in Firmagroup v B&D 67 ALR 29, at pages 37‑38, has fully considered this matter and concludes:

"... the law in Australia concerning this question may be stated thus. It is for the court to determine the meaning of a design in any proceedings under the Designs Act whether the central question be the meaning of the design, novelty or infringement ... evidence is plainly admissible but ultimately it is for the court to rule on the meaning of a design."

I take this to include the proposition that in any action before the Registrar (or his delegate) in which the novelty of a design is under consideration, it falls to the Registrar to decide the matter, rather than to "experts" in the field of the design, although he may consider any evidence from such "experts".
        It is of course well to bear in mind when considering the novelty and originality of a design that the important point is the impression made upon the eye of the observer by the totality of the design.  In this regard the comments in the text Russell‑Clarke on Copyright in Industrial Design (Fifth Edition) at page 37 are relevant:

"The question which has to be decided is whether the two appearances are substantially the same or not.  The design must be looked at as a whole, the question being whether an article made according to the design under consideration is substantially similar in appearance to an article made according to the alleged anticipation.  The test is not only to look at the two designs side by side, but also apart, and a little distance away."

Furthermore it is apparent from the authorities that when considering the appeal a design has to the eye, one needs to decide whether the design possesses "sufficient individuality of appearance" to be distinguished from an alleged anticipation. (See for example Malleys Ltd. v. J.W. Tomlin Pty. Ltd. (1961) 35 ALJR 352 and Dalgety Australia Operations Ltd v. FF Seeley Nominees Pty. Ltd. 6 IPR 361.)
        Addressing the present design application, the design for which protection is sought differs from the cited toy ball only in respect of the ornamentation arising from the use of twelve colours in a specified arrangement, compared to six colours, which are repeated in a particular arrangement.  I indicated earlier that the six colours of the toy ball span the spectrum and approximate six of the colours of the design.
        To my eye, the impression made by the design of the present application is not significantly different to that created by the toy ball.  The variation of colours and their arrangement in the design application compared to that of the toy ball, in my judgment can not be said to be such as to materially affect the similarity of the design.  To me there is the same appeal to the eye.  However, there is one other argument raised by Mr Old that warrants comment.  That is, he put it to me that the colours of the design in suit are so arranged that when applied to a ball, and that ball is spinning about a diametral axis, the appearance is of a ball having a number of coloured bands which encompass planes at right angles to the spin axis.  Notwithstanding that a similar result can be obtained with the cited toy ball (although the bands are different in colour from those of the ball of the design), I view this argument as irrelevant, at least in the present case.  The characteristic selected by Mr Old is one of a number of possible characteristics which go to function.  For example, the ball to which the design is applied could be made of resilient deformable material or of rigid material such as wood.  Upon bouncing such balls ‑ a normal usage, even as is spinning, e.g. as by rolling ‑ the appearance of each, insofar as shape is concerned would be different at the impact point of each bounce.  However the design itself, as distinct from the article to which it has been applied, remains the same, as illustrated in the representations accompanying the application.
        Consequently I find that the present application is not for a new or original design in terms of section 17, and I refuse the application.

(J.L. ROVETA)