PI-Design AG
[2018] ADO 2
•21 February 2018
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Request for examination of design number 201515424 (registered design number 365096) in the name of PI-Design AG.
| Delegate: | Adrian Richards |
| Representation: | Kate Andean of Banki Haddock Fiora |
| Decision: | 2018 ADO 2 Examination of a design under section 63 of the Designs Act 2003 (Cth) – section 19 considered – design new and distinctive over the prior art base – examination certificate to issue |
Background
On 14 October 2015, PI-Design AG (‘the Owner’) filed an application seeking registration of a design (‘the Design’) under the Designs Act 2003 (Cth) (‘the Act’). The Design was entered on the Register of Designs (‘the Register’) on 6 November 2015 with the following particulars:
Product name
A coffee maker
Design number
201515424
Registration number
365096
Statement of Newness and Distinctiveness
The visual features of the coffee maker depicted in the representations that are new and distinctive are the shape and/or configuration (‘the SND’)
Priority date
7 May 2015 (‘the Relevant Date’)
Representations
The Owner requested examination of the Design at the same time it filed its application for registration. Because of this, immediately after the Design was registered it was scheduled for examination. A first examination report was sent to the Owner on 6 January 2016, raising a single ground for revocation based on the Owner’s earlier Australian registered design (‘the Earlier Design’). Particulars of the Earlier Design relevant to this decision have been reproduced below:
Product name
A coffee maker
Design number
201514163
Registration number
363750
Registration date
24 August 2015
Priority date
12 March 2015
Representations
The Owner responded to the first examination report on 10 February 2016, drawing attention to the double walled areas visible in the Design, but this did not result in the ground for revocation being withdrawn. Instead, a second examination report issued on 10 March 2016, to which the Owner responded on 29 June 2016. Since the six month statutory deadline for the conclusion of examination was drawing near, the Owner filed a request for a hearing on 5 July 2016. The hearing request was able to be acted upon by this office once the payment of the relevant fee was made on 6 September 2016.[1]
[1] Designs Regulations 2004 (Cth) reg 11.07(2).
The examination was originally scheduled to be heard by me, a delegate of the Registrar of Designs, on 22 January 2018. However, on 20 December 2017 the Owner asked that the matter instead be decided on the papers. In response I vacated the hearing date and, in lieu of a hearing, set a deadline for the Owner to file any evidence or submissions by 22 January 2018. Kate Andean of Banki Haddock Fiora filed written submissions on behalf of the Owner on 22 January 2018, and so the matter was ready to be decided.
Examination of the Design
Section 65(1) of the Act states that the sole question to be answered when examining a design is whether a ground for revocation exists under s 65(2). The only ground for revocation relevant to the present proceedings is s 65(2)(a)—‘the design is not a registrable design’. A design is ‘…the overall appearance of the product resulting from one or more visual features of the product.’[2] Product, in turn, is ‘a thing that is manufactured or hand made’.[3] So far as the Act is concerned, all designs must be ‘in relation to’ a product.[4]
[2] Designs Act 2003 (Cth) s 5.
[3] Designs Act 2003 (Cth) s 6(1).
[4] Designs Act 2003 (Cth) s 8.
What is a registrable design is set out in s 15(1) of the Act:
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.
It is convenient to explain at this point what is meant above by ‘the prior art base as it existed before the priority date of the design’, particularly in relation to the Earlier Design. The starting point is the definition of prior art base in s 15(2) of the Act:
15 Registrable designs
(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.
According to ss 15(2)(a)-(b) the prior art base for the Design includes all designs that were publicly used in Australia, or were published in a document anywhere, any time before the Relevant Date. While many designs that fall into those two categories are relevant to the discussion below, it is noteworthy that the examination reports do not assert that either of these circumstances existed for the Earlier Design. There is no evidence that it was publicly used in Australia before the Relevant Date and it was not registered (and therefore published in a document) until 24 August 2015—over three months after the Relevant Date. The examination reports instead rely on s 15(2)(c). Each of the elements of s 15(2)(c) has been satisfied. The Earlier Design was filed under the Act,[5] claims a priority date two months earlier than the Relevant Date,[6] and was registered (which rendered it available for public inspection under s 60 of the Act) after the Relevant Date.[7] The Earlier Design is therefore in the prior art base for the Design.
[5] Designs Act 2003 (Cth) s 15(2)(c)(i).
[6] Designs Act 2003 (Cth) s 15(2)(c)(ii).
[7] Designs Act 2003 (Cth) s 15(2)(c)(iii).
Returning to the notion of registrable designs, s 16 of the Act goes on to define a ‘new’ design and introduces in broad terms what it means for a design to be ‘distinctive’:
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).
Of these limbs to ‘registrable design’, whether a design is new will always represent the lower bar. It serves only to invalidate designs that are the same as an instance of prior art. Since the Design is not identical to the Earlier Design I have no hesitation finding that the Design is new. This examination turns on whether the Design is substantially similar in overall impression to the Earlier Design. Section 19 of the Act sets out the considerations in making this assessment:
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).
I now turn to discussing these factors.
Discussion of section 19 factors
The informed user
The Owner submits that the informed user is a person familiar with coffee makers. That submission is to the point, but could do with some unpacking for the purposes of the discussion that follows. While the product name for the Design is ‘a coffee maker’, a person familiar with the product shown in the representations would readily identify it as something more specific. There are several methods commonly used to prepare coffee, and it is immediately apparent that the Design bears the visual features of a type of filter coffee maker known as a ‘pour-over’, of the non-electric variety, and one that includes a decanter (as opposed to decanting directly into a drinking vessel). In operation its conical neck is fitted with a filter, which is then packed with ground coffee beans, hot water is poured over the grind and the beverage collects in the chamber below.
For a person familiar with coffee makers, the pour-over style would stand sharp in contrast to, for example, an espresso machine. The visual differences between the two would signal differences both in methods of preparation and the qualities of the beverage produced. Despite their contrast, the informed user would still regard both as coffee makers, and so as similar products. An informed user would resort to picking out smaller differences in order to distinguish between two pour-overs than a pour-over and an espresso machine since in the latter comparison visual differences will invariably be more pronounced than in the former. I therefore focus my attention below on non-electric pour-over coffee makers, whilst bearing in mind the diversity that exists among coffee makers in general.
The statutory requirement that the standard be on the basis of familiarity with the product (or similar products) typically will lead to a comparison ‘based upon a careful and deliberate visual inspection’,[8] not ‘upon a fleeting or casual comparison of the [representations] or some “imperfect recollection”’.[9]
[8] Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1, 10 [39].
[9] Ibid.
Prior art base
An appreciation of the state of development of the prior art base is a central concern of the assessment of distinctiveness. The prior art base can aid in assessing other s 19 factors, particularly in gaining an understanding of the freedom of the creator to innovate. It also directly informs the degree by which differences in visual features will influence overall impression of the design in comparison. As a general proposition, when the prior art base is well developed smaller differences will generally be seen by the informed user as conferring a distinct overall impression.[10] The opposite is true for an underdeveloped art base—greater differences would be required to achieve the same effect.[11]
[10] D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224, 226-7.
[11] See, eg, Alfred Kärcher GmbH v Jinping Zhu [2016] ADO 3.
The Owner has provided an array of Google image search results for the phrase ‘pour over coffee maker’. The search was conducted about a month before the date of this decision, and no attempt has been made to restrict the results to before the Relevant Date. These images are of no assistance at this point since they are not shown to be in the prior art base. I do however return to them when discussing the freedom of the creator to innovate below.
The examination searches conducted for the Design also include a set of Google image search results, this time for the phrase ‘glass coffee brewer’ and restricted to the period of 6 May 2013 to 6 May 2015. Such a search on its own will not return coffee makers made of materials other than glass, nor will it necessarily show examples of relevant prior art given names other than ‘brewer’. This is not to intimate that the examination was deficient. According to the file many other keyword searches were conducted, but only these results were attached.
Despite these limitations, three things are apparent from this collection of images from the prior art base. Firstly, at the Relevant Date there were many types of coffee maker, and from within the subset of non-electric pour-over coffee makers there was a diversity of visual features. Secondly, whether looking at coffee makers in general or only the non-electric pour-over subset, at the Relevant Date there existed a rather crowded prior art base, and so the significance of smaller differences between the Design and the Earlier Design should be carefully weighed when assessing the overall impression of each. Finally, there are no examples in the prior art that incorporate double walled glass.
Freedom of the creator of the design to innovate
The shape and configuration of a pour-over coffee maker is dictated in some respects by its functional requirements. The upper area that houses the filter and coffee grounds must both approximate the shape of the filter (that is, at least internally, conical). Since the device relies on gravity, the filter area also must be positioned above the decanter into which the brewed coffee gathers. Another essential element of this type of product is a means of safely transferring the hot liquid into a drinking vessel. In the case of the Design and the Earlier Design, this has been accomplished by way of a handle opposite to a pouring lip. A handle is not the only way to achieve this, however. An alternative method that appears many times in both prior and post art involves placing a collar of thermal insulation, such as cork, around the vessel. Some examples from the post art are set out below.
The remainder of the visual appearance of this category of coffee maker is less dictated by function than by market expectations. By way of contrast, an electric pour-over coffee machine tends to be bulkier since they incorporate a housing for a cold water reservoir and various electrical componentry, such as in the below examples.
The non-electric variant instead typically has a small footprint, as exemplified by the Design and the Earlier Design. This is possible due to the simplicity of its operation. Looking at the examples of prior and post art, it seems that a majority of the consumers of this type of product are likely to prefer a commensurately simple design. A smaller remainder of consumers would instead demand something more visually complex (if perhaps a little more challenging to clean).
Amount, quality and importance of the similarities
The Owner has quite rightly conceded that the similarities are many, noting that the real issue for determination ‘is essentially whether the double-wall feature of the Design is sufficient to render it substantially different to the [Earlier] Design in overall impression.’ The ‘amount’ of similarity is therefore rather large, though I hasten to add that a great portion of the Design is executed in double walled glass—a point I return to in my summation below.
The other two elements, quality and importance, are informed by the above discussion on the freedom of the creator to innovate. The general impression conveyed by the conical area above a decanter is to be discounted to a significant degree. The quality and importance of these visual features accord more to the essential features of this product than of design considerations. The slimness and simplicity of the designs in comparison can also be seen as being influenced by market demand. So to the handle, since it is the more common out of a few possible solutions to the need to pour hot liquid from the product into a drinking vessel.
Nothing above is intended to be overstated. Market expectations and functional requirements of this type of product at most give a general guideline to how this product will be shaped and configured. The prior and post art show great variances out there that still fall within those general guidelines.
To summarise, there are large and rather obvious areas of similarity. This is tempered (albeit very modestly) by the fact that the quality and importance of those areas of similarity are not absolute.
Statement of newness and distinctiveness
The Owner notes that both the Design and the Earlier Design include a statement of newness and distinctiveness (‘SoND’) that claims the visual features of shape and configuration, and submits that as a result ‘it is the shape and configuration of each as a whole that must be considered.’ This conclusion is correct, though I would like to dispel two inaccuracies in the premises that led to it.
Firstly, both designs bear only the three dimensional features of shape and configuration, as opposed to pattern and ornamentation, which are usually two dimensional. It would be impossible to pay regard in either design to visual features other than shape and configuration, since they do not exist.
Secondly, where an instance of prior art happens to be an earlier registered design with a SoND, that SoND is not relevant to the examination of a later filed design. This is because the SoND associated with an earlier design does not form part of the prior art base. The prior art base consists only of designs.[12] As has been covered above, a design is ‘the overall appearance of the product resulting from one or more visual features of the product’,[13] not its associated paperwork.
[12] Designs Act 2003 (Cth) s 15(2).
[13] Designs Act 2003 (Cth) s 5.
However nothing turns on any of this in the present case. Section 19(2)(b) of the Act requires me to pay particular attention to the features mentioned in the SoND. The SoND seeks to emphasise the shape and configuration of the Design, and the representations of the Design show only shape and configuration. The result of this is that the SoND doesn’t have much of an effect, if any, on the overall impression of the Design.
Similarity in overall impression
Given the above discussion, the factors of s 19 of the Act do not firmly point in one direction or the other. On the one hand, the amount of similarity between the Design and the Earlier Design is great. The Design resembles the Earlier Design so much that were it not for the differentiation that is the double wall feature, I would have simply concluded that the Design was not new. On the other hand, the state of the prior art base is such that it can generally permit smaller details to form the basis for a finding of distinctiveness. The freedom of the creator to innovate, and related concepts of the quality and importance of the similarities also support the Owner’s position, but only marginally. The ultimate decision remains finely balanced.
In coming to a conclusion it is helpful to recall that that the assessment is a side-by-side comparison, from the point of view of the informed user, who would readily resort to noting smaller features to distinguish between two non-electric pour-over coffee makers. In that vein, the Owner has provided noteworthy pair of images showing a different design for the product using a single wall beside to an image of the Design. These are reproduced below.
These images show two examples of the product as it might appear in use after brewing a batch of coffee. While this is something extra to what is shown in the representations of the Design, this particular something would not be far from the mind’s eye of the informed user. In the above image of the Design, it can be seen that the coffee, crema and condensation assume the shape of the inner wall, serving to accentuate the visual effect of its double wall feature. The transparency of the double wall gives an illusion that the fluids it contains are floating. I agree with the Owner’s submission that this is ‘an intriguing design feature and a point of interest’.
A double wall also provides more insulation than a single wall, so this visual feature communicates to the informed user that there is likely to be a functional difference between the Design and the Earlier Design.[14]
[14] See, eg, Astra/Zeneca AB [2007] ADO 4; Kmate Pty Ltd v David Mills [2017] ADO 1.
As mentioned above in relation to the amount of similarity, the double wall covers a significant proportion of the Design. It is also readily appreciable from any angle, and as such it contributes significantly to the overall appearance of the Design.
The Design is obviously related art to the Earlier Design. But, despite its similarity to the Earlier Design in a great number of respects, I am on balance satisfied that the double wall feature in the Design grants it a substantially different overall impression to the Earlier Design.
Decision
I find that no grounds for revocation have been made out for the Design. As a result, examination of this design has been completed, and I direct that a certificate of examination issue for the Design.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
21 February 2018
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