Nisshin Foods Inc. - [2018] ADO 3

DESIGNSACT 2003

DECISIONOF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Request for examination of design numbers 201516411 and 201516412 (registered design numbers 365914 and 365915) in the name of Nisshin Foods Inc.

DELEGATE:

Adrian Richards

REPRESENTATION:

Daneta Crump of FPA Patent Attorneys

DECISION:

2018 ADO 3

Designs Act 2003 (Cth) – examination of two designs under section 63 – both designs new and distinctive – examination certificates to issue

Background

Nisshin Foods Inc. (‘the Owner’) filed two applications under the Designs Act 2003 (Cth) (‘the Act’) on 27 November 2015. In each of those applications there was one design (together, ‘the Designs’). The applications passed their formalities checks on the same day, and were both entered on the Register of Designs (‘the Register’) on 16 December 2015. There are several particulars that the Designs have in common on the Register. Relevant to my discussion below are the following shared particulars:
Product name Dry noodle

Prio rit y date
27 November 2015 (‘the Relevant Date’)

Statement of Newness and Distinctiveness
Newness and distinctiveness resides in the features of shape and/or configuration of the dry noodle as shown in the accompanying representations, including the cross-sectional shape of the noodle which twists along the axial length of the noodle at a rate of about 60 degrees per 25cm, and having an axial length of about 125 times its diameter. (‘the SoND’)

The only difference in particulars that appear on the Register for the Designs are their representations—design number 201516411 has three grooves and design number 201516412 has four, as can be seen in the selected representations below:
Design number 201516411
Design number 201516412
The Owner filed requests for examination of the Designs on 19 July 2016. This office issued a first adverse examination report against each of the Designs on 14 October 2016. The sole ground for revocation cited a granted design patent from the United States of America (‘the Citation’), the relevant details of which I have included below:
Patent number 8647694

Product name Grooved noodle

Date of grant
11 February 2014 Selected representations

The first image above is an isometric illustration of the three grooved variant, and the second is its cross section. The final image is a cross section of the four grooved variant. A point made by Ms Crump at the hearing, which I accepted at the time, is that the circles labelled ‘C’ in both of the above cross sections do not

illustrate the peripheral edge of the Citation (unlike the outer edge of figures 4 and 5 of the Designs). The dotted circle instead is used merely as a comparative device to explain various ratios and measurements of the Citation in the degree of detail that is customary for a design patent from the United States of America, which in this case run to almost three pages.

A copy of the Citation was attached to each of the examination reports. According to that document the above representations had been published on 31 May 2012,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Nisshin Foods Inc. [2018] ADO 3
Case: [2018] ADO 3
Decision Date: 3 April 2018

CaseChat Overview and Summary

Nisshin Foods Inc. is the owner of two registered designs, design numbers 201516411 and 201516412, which depict a dry noodle with specific visual features. The Designs were challenged by a third party, resulting in a request for examination under section 63 of the Designs Act 2003 (Cth). The key legal issues before the court were whether the Designs were new and distinctive when compared to the prior art base for the design as it existed before the priority date of the design. The Designs were found to be new as they did not have an identical or substantially similar design in the prior art base. The main issue was whether the Designs were distinctive, which was determined by weighing various factors outlined in section 19 of the Designs Act 2003 (Cth).

The court examined the Designs against the prior art base, considering factors such as the standard of the informed user, the state of development of the prior art base, and the freedom of the creator of the design to innovate. The court found that the Designs were distinctive as they had a twist along the axial length that was not present in the prior art, and this feature was significant to the informed user. The Designs were also found to have a different overall appearance when compared to the prior art. As a result, the Designs were deemed to be new and distinctive, and the examination certificates were issued to Nisshin Foods Inc.

This decision highlights the importance of considering all factors outlined in section 19 of the Designs Act 2003 (Cth) when determining whether a design is distinctive. The court found that the Designs were distinctive based on the twist along the axial length and the overall appearance of the Designs when compared to the prior art. This decision serves as a useful reference for future examination of designs under the Designs Act 2003 (Cth).

Orders