Nisshin Foods Inc.
[2018] ADO 3
•3 April 2018
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, well before the design patent was granted. Perhaps it was out of an abundance of caution that the Australian examination reports rely upon the far later date of grant. In any event, which of these dates appeared on the examination reports would not have made a difference, since both are earlier than the Relevant Date.
The Owner submitted a response to the examination reports on 30 January 2017, drawing attention to the appearance of a twist along the axial length in the Designs, which is absent from the Citation. Another set of adverse examination reports were sent from this office to the Owner on 20 February 2017. The Owner responded on 7 April 2017, this time emphasising that the product is identified as a dry noodle and seeking to draw from this several implications that this has in construing the Designs. Within the Owner’s responses was a request that examination of the Designs be heard together should their grounds for revocation not be withdrawn. Third adverse examination reports issued on 11 April 2017, and invitations to pay the hearing fees followed. Once the Owner had paid those hearing fees on 9 June 2017, this office was able to schedule a hearing for 28 February 2018.
One week before the hearing, in line with my directions, the Owner filed evidence and an outline of submissions in preparation for the hearing of these examinations. The examinations were then heard together on as scheduled before me in my capacity as a delegate of the Registrar of Designs. Daneta Crump of FPA Patent Attorneys provided oral submissions at the hearing on behalf of the Owner.
Examination framework
Section 65(1) of the Act sets out in broad terms what is involved in examination of a design. That is, the Registrar must decide whether there are grounds for
revocation of its registration. The only ground of revocation relevant to the present examination is s 65(2)(a) of the Act: ‘the design is not a registrable design’. Since only registered designs can be examined, the appearance of the term ‘registrable’ here on its face seems to beg the question. To skirt around its apparent incongruity, the Act defines ‘registrable design’ in s 15:
15 Registrable designs
(1)A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
(2)The prior art base for a design (the designated design) consists of:
(a) designs publicly used in Australia; and
(b) designs published in a document within or outside Australia; and
(c) designs in relation to which each of the following criteria is satisfied:
(i)the design is disclosed in a design application;
(ii)the design has an earlier priority date than the designated design;
(iii)the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
Note: For document , see section 2B of the Acts Interpretation Act 1901.
Whether the Designs are registered does not actually factor into whether they are registrable. Rather, they must have been both new and distinctive at the Relevant Date. ‘New’ and ‘distinctive’ are defined in s 16 of the Act:
16 Designs that are identical or substantially similar in overall impression
(1)A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2)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 (see section 19).
(3) ...
Design is defined, in relation to a product,1 as the overall appearance of the product resulting from one or more visual features (which include the shape and configuration) of the product.2 As has been mentioned above, the Designs both feature a twist along their axial length that is not present in the Citation. This twist manifests a difference in shape and configuration, so both Designs are new within the meaning of the term in the Act. The central issue in these examinations is whether this twist renders the Designs distinctive when compared with the
1 Designs Act 2003 (Cth) s 8.
2 Designs Act 2003 (Cth) ss 5, 7(1).
Citation. As set out in s 16(2) of the Act, the concept of distinctiveness is tied to that of substantial similarity in overall impression. Deciding whether either of the Designs is substantially similar in overall impression to the Citation requires the weighing of several factors set out in s 19 of the Act, which I have reproduced below.
19 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).
The general mode of comparison to be made between each of the Designs and the Citation has been helpfully discussed in two Federal Court cases quoted below:
[A]lthough the test is based on impression, it is not based merely on a casual comparison between designs for a given article. There needs to be a studied comparison based on the prescriptions of s 19 of the Designs Act. Thus, the notion of ‘imperfect recollection’ — familiar in trade mark law — has no application when determining design similarity.3
The informed user will also be taken to have a familiarity with the Registered Design and the product that is alleged to infringe based upon a careful and deliberate visual inspection. Section 19 of the Act contemplates that the Court will have regard to all
3 Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) 214 FCR 323, 334 [55] (citations omitted).
the similarities and the differences between the visual features of the two designs in coming to its ultimate conclusion. Hence, the relevant comparison cannot be based upon a fleeting or casual inspection of the drawings or object in question or some ‘imperfect recollection’ of either of them. That is not to deny that the comparison to be undertaken is essentially impression based.4
Despite their slightly different expressions of ‘a studied comparison’ or ‘a careful and deliberate visual inspection’, both of these excerpts are in agreement, and were deduced by implication of the ordinary meaning of the terms of s 19 of the Act. Another common element to these descriptions is the deliberate move away from a ‘casual’ approach to the comparison, and in particular from the trade mark notion of ‘imperfect recollection’. An implication of this ‘studied’, ‘careful and deliberate’ comparison is that it should be made with each of the Designs side by side with the Citation.
Evidence
The Owner filed the following declarations prior to the hearing:
Leanne Kitchen, food writer and editor, made on 16 February 2018 with Exhibits LK1-LK6 (‘Kitchen’).
Rabieh Boukarroum, Patent Engineer at FPA Patent Attorneys, made on 19 February 2018 with Exhibit RB1 (‘Boukarroum’).
Boukarroum sets out the details of a series of prior art searches conducted by the declarant. They consist of eight keyword searches, all conducted on Google, and all limited to images from before the Relevant Date. The results of the searches have been annexed to the sole exhibit. The keywords used are comprehensive, and as such their results have been of significant assistance in assessing several of the factors relevant to examination found in s 19 of the Act.
In contrast to Boukarroum, Kitchen is less concerned with recording facts than it is with conveying the specific knowledge, experience and opinion of the declarant. In broad terms it sets out the instructions Ms Kitchen was given by the Owner’s attorneys before outlining her knowledge and experience in the food industry, and then her views around noodles generally. Once her general reflections had been recorded, Ms Kitchen was given a copy of the searches annexed to Boukarroum, of which she offers an assessment noting that her general views expressed earlier had not been altered by the specific search results before
4 Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1, 10 [39] (citations omitted).
her. The Owner’s attorneys then gave Ms Kitchen a copy of the Citation, which she inspects in some detail. Finally, Ms Kitchen was given a copy of the Designs and asked to compare then to the Citation.
As part of her instructions, Ms Kitchen was furnished with a copy of the current Federal Court practice note relating to expert witnesses.5 Ms Kitchen declares that she has read, understood and complied with the practice note as though the references therein to the Court were references to this office. There is no reason to doubt the credibility of Ms Kitchen’s evidence. She seems well qualified to give the testimony that she has, and, based on the evidence before me, has no
connection to the Owner other than in the making of her declaration. Ms Kitchen’s adherence to the Court’s practice note together with the Owner’s attorneys’ systematic approach to adducing evidence from her only adds to the integrity of her evidence. Her evidence is based upon her specialised knowledge, and has been quite deliberately structured in order to offer an impartial assessment of the issues Ms Kitchen was asked to address. I have accordingly given the evidence of Ms Kitchen significant weight in relation to many of the factors discussed below in these reasons. Of course, this does not extend to adopting her views on the
ultimate questions to be answered in these examinations, since the Act requires that I form my own view on those matters.6 That is, even though the Owner puts forward Ms Kitchen as ‘indicative of the notional informed user’, it is for me to apply the standard of the informed user to the questions that arise under s 19 of the Act.
Discussion of Section 19
As I noted in the background, the particulars in the Register for the Designs are the same aside from their representations. They relate to the same product, and carry with them the same Relevant Date and SoND. It follows that they are subject to the same standard of the informed user, the same constraints on the creator, and share the same prior art base. They even share their difference to the Citation. The twist is essentially the same thing in in both of the Designs. The only material difference between the representations of the Designs is the number
5 Federal Court, Expert Evidence Practice Note (GPN-EXPT), 25 October 2016.
6 Keller v LED Technologies (2010) 185 FCR 449, 460-1 [36]-[37].
of grooves running along their respective lengths—201516411 has three grooves and 201516412 has four. In that regard, the ground for revocation raised at examination relies upon two different ‘embodiments’ disclosed in the Citation, one with three grooves and one with four. Given all of these areas of convergence, it is appropriate to discuss the factors of s 19 of the Act for the Designs together.
Standard of the Informed User
A point of contention to date has related to the standard of the informed user. The position stated in the second adverse examination report was that the informed user would not be any more confined than the general consumer of noodles. The Owner’s counter arguments to this at hearing relied upon Kitchen, of which the following excerpts are most instructive:
I identify different noodles based on the dish I intend to create. From a cooking perspective, I understand that the outcome or final dish that I intend to create will govern the type of dry noodle I select…Certain dry noodles are better for a given dish than others.
In identifying different noodles on a shelf at, for example, an Asian grocer, there are certain visual cues that will alert me to the type of dry noodle that I may be looking for. These cues include features of the dry noodle such as width, thickness, colour, shape, overall size, patters, and translucency, amongst others. These features provide me information relating to aspects such as cooking time, method of cooking, and sauce retention in the case of pasta dishes or noodle dishes with sauce bases…
My experience of standard dry noodle customers in Australia is that their noodle selection can be more random. One size doesn’t fit all. As most dry noodles are imported into Australia from Asian countries with packaging often having very little English to help the typical consumer, the standard consumer is often not aware of how the differences in the noodle shape or size will affect a certain dish that is to be made.
Ms Kitchen has significant experience in food preparation and commentary, having worked in the food industry for around 30 years. She began training and then working as a chef in the 1980s, before transitioning into food journalism in the mid-1990s. Having previously held the position of Food Editor at several well- known periodicals, Ms Kitchen’s work is now mainly freelance food writing and publishing, rounded out with some food research and cooking demonstration. Ms Kitchen also declares that she has a particular interest in Asian cooking, and the she purchases noodles and/or pasta weekly. Incidentally, the Owner’s attorneys
came across the work of Ms Kitchen during their research in preparation for the hearing of these examinations due to her article on the SBS website.7
The point Ms Kitchen makes, and which I accept, is that not all consumers of noodles are familiar with the proper food preparation methods for specific noodle types. It stands to reason that a person who is familiar with dry noodles (or similar products, such as fresh noodles) is a person who knows how they are best used, rather than relying on a ‘more random’ method of noodle selection. The viewpoint of the general consumer of noodles is therefore not one that would fall within the standard of the informed user. In contrast, Ms Kitchen has demonstrated that she is familiar with noodles, and so I think would also be many chefs, food writers and food scientists, as well as all noodle gourmets and many noodle gourmands.
State of development of the prior art base
It should be safe to assume that the vast majority of innovation in the noodle art base happened a very long time ago indeed. It therefore should come as no surprise to anyone that the art base at immediately before the Relevant Date was significantly developed. Ms Kitchen notes this point8 which is supported by swathes of examples annexed to Boukarroum. The point was also made by this
office in the second adverse examination report, which was informed by the searching that was done within this office prior to the first adverse examination report. This means that smaller differences between the Designs and the Citation, provided they are of sufficient importance to the informed user,9 can be relied upon for a finding of distinctiveness.10
Freedom of the creator of the design to innovate
There are two broad categories of constraints that have been recognised— constraints that are inherent to the product and those that are extrinsic to it.
Beginning with the visual features that make a dry noodle a dry noodle, the Owner submits that were we to see something that was not long and thin (in relation to its
7 Leanne Kitchen, Know your noodle: The ultimate guide to Asian noodles (22 August 2016) SBS
< ‘My understanding of the dry noodle market in general is that it is vast, with many different named products, brands, shapes and sizes. There are a lot of options.’
9 Manitowoc Foodservice Companies LLC [2013] ADO 2.
10 Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.
length), we would not behold a noodle. Having looked through the examination search results and the annexure to Boukarroum, I accept that submission.
The second category of constraint relates to drivers from outside the product. Two commonly raised examples are industry standardisation and market demand. In the earlier part of Ms Kitchen’s declaration where she was working from her own recollection, when reflecting on the nature of dry noodles she observed that:
…most dry noodles are produced by an extrusion process, whereby it is more difficult to produce significant differences in shape or pattern.
Later on, when asked to consider the Citation, Ms Kitchen deduced the following about its production:
I would expect that such a noodle would be manufactured by an extrusion process, using a purpose-made metal dye [sic], and then dried.
But when confronted with the Designs, Ms Kitchen was less certain:
It is not clear to me how one would manufacture [the Designs]. It would most likely be by extrusion, through custom-made metal dyes [sic] which logically would have to somehow turn during the extrusion process in order to produce the twisted characteristic of the formed noodle. The noodles would then, I’d assume, be dried after shaping, to extract all the moisture, resulting in a hard dried noodle.
So, according to Ms Kitchen, noodles that incorporate grooves are almost certainly extruded. This probably includes the Designs, but the declarant is unsure of precisely how their visual features were formed. The process of extrusion therefore introduces its own constraints to the cross section of those grooved noodles.
Turning to market demand, I again quote from Kitchen:
[T]here are always additional constraints particularly in Asia, with regards to ‘cooking engineering’, ie. using products that suit the intended dish. There are established universal shapes such as the long and thin variety, such as spaghetti, fettucine and linguine. However, it is difficult to go off on shape tangents when noodles are generally made to suit certain dishes, particularly in view of dry noodle types that are known to usually work. Certain dishes require noodles to be of a certain texture which are influenced by noodle ingredients and shapes.
It is difficult to draw from this which particular visual features were subject to these market expectations, such that they fettered the co-creators of the Designs. The general picture that this does help to form, reinforced by the industry
standardisation discussed immediately above, is a general inertia in the development of new art in this field.
Statement of newness and distinctiveness
These are some of the more detailed SoNDs I have been required to incorporate into my decision making processes. In my experience the majority of SoNDs typically direct the eye to two or three dimensional features (or both), and less often will highlight a particular area of the subject design to be considered. The present SoNDs do all of that of course, but they also step beyond that well-trodden path.
The SoNDs call for particular attention to all of the ‘shape and/or configuration’ of the Designs. In other words the three dimensional features of the noodles are the focus, but this would be obvious from viewing the representations alone. The SoNDs engage in real work when they refer to ‘the cross-sectional shape…which twists along the axial length’. This describes what I have referred to as the ‘twist’ a number of times already. The words that follow, ‘at a rate of about 60 degrees per 25cm’, at first appear precise but upon further inspection reveal themselves to be vague and not particularly helpful. It appears as though the rate of twisting throughout the full length of the noodles in the representations for each of the Designs could be 60 degrees, so it may be that the length of the noodle pictured is indeed 25cm. But, since there is no frame of reference into which these numbers can be factored, this is all guesswork. This attempt to describe the rate of twisting is of little importance, since the overall visual impression of the Designs is not so much set by their SoNDs as it is merely informed by it. I can see this ‘cross- sectional shape…which twists along the axial length’ in the representations, and this is enough of an explanation from which to discern what visual features the Owner is seeking to draw particular attention to. In a similar vein, that final element of the SoNDs ‘having an axial length of about 125 times its diameter’, is a complex way of saying that the Designs are long, thin and round. This is also not very helpful since, as discussed earlier, these are all features that are inherent to noodles.
The essential point of this is that the Owner has put on the record that particular attention must be paid to the twist, and unsurprisingly, it is also what the Owner urged at the hearing.
Amount, quality and importance of the similarities
The Designs and Citation are more or less identical in the shape of their cross sections, but this is where the similarity ends. Picturing how each example of art would appear from the side would offer the most obvious difference. While the Citation would show grooves down its length, the Designs would instead be twisted. Even when viewed from their ends the difference would be readily apparent, since the twist in the designs forms a circular outline (as illustrated by figures 4 and 5 of the designs) and the Citation would from this angle resemble the shape of fan blades. What is more, the Designs do not seek a monopoly in the cross section of these dry noodles, but their overall appearance.
Turning to quality and importance, greater weight must be given to features that informed users are likely to view in products in their normal modes of use.11 Rather than staring down the end of a bunch of dry noodles or mentally dissecting them into cross sections, informed users would view and select them by looking at their most visible angle, the side. Taking this approach, the quality and importance of the similarity in cross section is significantly diminished.
Similarity in overall impression
Having been through each of the factors in 19 of the Act, this strikes me as a rare case. Typically the factors will pull in either direction with more or less weight, but here all point fairly strongly toward a finding of distinctiveness for both of the Designs.
Decision
No grounds for revocation have been made out for the Designs. Examination has therefore been completed, and certificates of examination will be issued to the Owner.
11 See, eg, Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1.
[15]
Adrian Richards Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group 3 April 2018
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