Quigg v Grubi

[1997] ADO 2

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Design:       No. 124206 in the name of Gail Maree Quigg

Article:       Cross over pants

Action:       Application for extension of the period of registration; notice under S.27A(4); hearing.

Decision:       Issued            . 

Abstract:       Design found to be new and original; term extended.

Poor representations, but scope of monopoly still determined.

Application of statement of monopoly and statement of novelty discussed.

Novelty-conferring features not in statement of novelty.

DESIGNS ACT 1906

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Re:Design No. 124206 to Gail Maree Quigg, application for extension of the period of registration, and notice under S.27A(4) by Timothy Patrick Grubi.

BACKGROUND

On 15 May 1995 Ms Gail Quigg lodged an application to register a design for cross-over pants. The earliest priority date of the application was 15 May 1995. Ms Quigg requested the examination be expedited. Registration took place on 8 August 1995. The application received registration number 124206. The initial period of registration expired on 8 August 1996, but Ms Quigg had applied on 7 August 1996 for extension of the period of registration.

The Designs Act allows a third party to inform the Registrar about any documents which the third party considers to deprive the registered design of newness or originality. For registration 124206 the time limit for lodging this information under S.27A(4) was 8 July 1996.  Mr Timothy Grubi lodged, through his patent attorney at that time, a notice of matter material to newness or originality of design (Form 8) and supporting material on 4 December 1995.

The Designs Office sent a copy of all the material lodged by Mr Grubi to Ms Quigg on 3 January 1996. Ms Quigg lodged her response on 5 August 1996.  On 18 October 1996 both parties were advised that the Deputy Registrar of Designs proposed to extend the period of registration. The reasons were set out in a written opinion of the Deputy Registrar dated 27 September 1996.

The matter was heard in Canberra on 24 February 1997; the registered owner was represented by Mr Michael Baumann, barrister, and Mr Grubi was represented by Mr Ron Greves, solicitor. Mr Grubi also made submissions at the hearing.

The Registered Design

The Register of Designs includes the following for Registration No.124206:

• Eight representations:   copies of three photographs and five drawings.

• A statement of monopoly:  “monopoly is claimed in the features of shape and configuration of these pants as illustrated in the representations.”

• A statement of novelty:   “novelty is claimed in the back pocket, the hook and loop fasteners at the front, the relatively wide front section compared to the back and the taper of the leg from mid-calf to waist on an exaggerated angle.”

The Register also indicates that the article in respect of which the design is registered is “cross-over pants”. The representations show such an article. The representations are copies of three photographs, lodged on 15 May 1995, and five drawings, lodged on 3 July 1995. The photographs show views of a pair of cross-over pants laid out flat, apparently on the floor. The views are: open from the rear with no crossover, open from the front with no cross-over, and from the front with the cross-over closed.  The drawings show a view from the rear with no cross-over, a view from the front with no cross-over, a side view, a front view with the cross-over closed and a view from the rear with the cross-over closed. It appears from the representations that the pants are relatively wide at the waist in the open position, and in the closed position the sides are drawn to the front and tied in place. Some of the drawings depict a pair of cross-over pants as they would appear when worn by a person.

The Deputy Registrar’s opinion indicates that the examiner objected to the photographs on the grounds that they are too dark, that dark patches obscure parts of the design and that they do not clearly show all visible features of the design. The examiner requested Ms Quigg lodge fresh representations. Ms Quigg then lodged a first set of “informal” drawings on 15 June 1995, followed by a second set, lodged on 3 July 1995. There was no formal request to treat these drawings as an amendment. The Deputy Registrar’s opinion suggests on page 2 that it is significant that the front closed view in the drawings is quite different from the views in the photographs. The earlier representations do not show the baggy wrap-around portion that appears in the 3 July 1995 front closed view. The Deputy Registrar also indicates that “there were no formal requests on file to delete any representations so that registration has occurred for the representations mentioned.”

The Informant's Material

Mr Grubi's patent attorney lodged the following documents in support of the Form 8:

• statutory declaration by Mr Timothy Grubi, dated 28 November 1995 and exhibits TPG01, TPG02

• a letter, dated 4 December 1995, from Mr Dennis Barr

• a letter, dated 20 December 1995, from Mr Dennis Barr, and

• a letter, dated 19 March 1996, and two attachments, from Mr Tim Grubi.

The Registered Owner's Response

On 5 August 1996 Ms Quigg lodged the following as a response:

• a letter dated 1 August 1996

• an appendix (appendix B) being a photocopy of page 14 from the Sunday Mail magazine of 6 December 1987

• appendix D being a letter from Mr Cliff Carew, patent attorney, an opinion on infringement and various other attachments; a number of these attachments are photocopies of faxed pages and it is difficult, if not impossible, to see any of the detail in the sheets.

Shortly afterwards Ms Quigg lodged, by express post, a pair of Hostyle pants in small check pattern and a pair of Chef Clothing Revival pants in black. Ms Quigg states in her letter: "I have enclosed a sample of the Chef Revival trousers (106631) and my own design (124206) which are both commonly available to the public."

The Deputy Registrar noted that the pair of Chef Revival trousers differs in some respects from the representations in design registration No.106631, which is registered in the name of Mr Grubi, the informant in this case. The black trousers have two not three press studs at each side, Velcro (Registered Trade Mark) strips on the inside of the waist, and there are two pockets, whereas the representations do not show Velcro strips and pockets.

Material filed at and after the hearing

At the hearing the informant adduced a document: “Expert report of Suzanne Lorraine Osmond”, which in my view can be construed as matter to be considered under S.27A(9). Mr Baumann indicated that he had not seen this document before so I allowed 14 days for the registered owner to respond to matters brought up in the document. A response was filed on 10 March 1997; it was accompanied by two articles of clothing “obtained from third party manufacturers” and by a “Report by Lisa Reginato”. I note that (1) neither of the experts’ reports was in the form of a statutory declaration, nevertheless I did give them a little weight in my deliberations, and  (2)  Ms Osmond’s report seemed more relevant than Ms Reginato’s report because the latter relates more to pattern construction rather than shape and configuration.

The Test for Originality

Section 17 of the Designs Act provides the test for whether a design is a new or original design, viz:

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.

Deputy Registrar’s Opinion

The Deputy Registrar suggests that the statement of  monopoly, which specifically refers to “features of shape and configuration”, means that features of pattern or ornamentation shown in the representations, such as the chequered pattern shown in the photographs, are not within the scope of the registration. 

The Deputy Registrar dealt with other features such as the pocket and Velcro fasteners by referring to the following case law:

• Cow (P. B.) & Coy. Ltd. v Cannon Rubber Manufacturers Ltd [1959] RPC 240

• Sommer Allibert (UK) Ltd v Flair Plastics Ltd [1987] RPC 599

• Aluminium Specialities Pty Ltd v Ibis Building Products Pty Ltd (1982) 42 ALR 127

• Travers Ltd's Application 68 RPC 255

He concluded that: “it is my opinion that because the pocket, the Velcro fasteners and the seams are attached to the surface of the trousers they do not alter the overall appearance of shape of the trousers and are therefore not features of shape or configuration.”

Comments in Travers Ltd's Application, supra, relate to the depiction of an article that may have a different appearance when being worn from not being worn. The Deputy Registrar referred to page 256 of the RPC in his opinion, viz:

“A skirt is clearly an article to which features of shape, configuration, pattern or ornament can be applied, and what I have to decide, therefore, is whether such features of shape (no other features were claimed) as the article bears, are sufficiently novel to deserve registration. The first question is "What is shape?". The representations, when related to the specimen produced, show that what is illustrated is merely one of many arbitrary forms which the skirt may be made to assume according to the owner's necessity or caprice. It has been the consistent practice of this Office for many years to insist that representations of articles of clothing should show the article laid out as flat as possible; and this rule has been applied to frocks, skirts, brassieres, corsets and so on. The article may not be shown on a form or model, since it is immediately made to assume a false shape which will obviously vary according to the shape and proportions of the model. Quite clearly the basic shape of the article, and one which it can be made to assume every time, is that which it exhibits when laid out flat and fully extended. (emphasis added).”

A statement of novelty is a statement that indicates those features of the representations in respect of which novelty or originality is claimed, and is usually requested by the Designs Office where there is significant prior art. In this case the examiner had initially reported that in his opinion the registered design was not new or original in the light of Registered Design No.106631, registered in the name of Mr Grubi, the informant. The Deputy Registrar dealt with the features in the statement of novelty as follows:

“In the representations lodged on 15 May 1995 I can see the back pocket, the hook and loop fasteners at the front. I am unable to see the features of relatively wide front section compared to the back and the taper of the leg from mid calf to waist on an exaggerated angle.

“In the representations lodged on 3 July 1995 I can see the back pocket, the hook and loop fasteners at the front. I am unable to see the features of relatively wide front section compared to the back and the taper of the leg from mid calf to waist on an exaggerated angle. This may be because I am unsure of the meaning of the words. In the photograph of the back view open I can see some form of taper..... At page 4 of her letter, Ms Quigg writes: ‘the exaggerated angle varies, dependant on body shape so cannot be defined precisely’.  Thus it seems to me this feature of the novelty statement is a feature only visible when the pants are worn. I do not think this is a proper basis for this feature. The features of shape conferring novelty must be visible in the article when laid out flat.

“As I consider the representations of 3 July 1995 to depict the cross-over pants in the being worn position and being mindful of the comments in Travers Application I shall base the remainder of this opinion on the representations of 15 May 1995.”

The Deputy Registrar then considered the issue of whether Design No.124206 is a new or original design over the documents supplied by the informant; viz:

“The documents that I shall consider are:

·the photograph at page 3 of The Chef's Gazette of February 1995

·registered design 106631 published in Australia on 2 February 1990

·the photograph at page 14 of the Sunday Mail magazine of 6 December 1987

·the infringement opinion and attachments lodged by Ms Quigg.

“I must consider whether any or all of these documents render the design, as I have construed it, not new or original.

“Mr Grubi has also placed a copy of an advertisement on page 37 in the March 1996 issue of Hospitality Foodservice magazine. No date of publication in Australia has been provided. In any case, as March 1996 is later than the lodgement date of 15 May 1995, the issue of prior publication cannot apply. I need not consider this material any further.

“The photograph in the February issue of the Chef's Gazette shows a model wearing a pair of wrap around pants. The informant has provided no details of the date of publication of this magazine in Australia. There is a presumption that the February issue would be published in February. However I require a date to consider it as a possible anticipation of the design. The detail in the photograph is poor. The wrap around part seems to extend from some point on the hips to the waist.

“Mr Grubi submitted: "The Chef's Gazette published February 1995 featured an article reporting a fashion parade of Hostyle Clothing, accompanied by photographs showing trousers of the kind featured in registration no. 123206."

“Mr Barr in his letter of 4 December 1995 says: "In any event, as seen in the Chef's Gazette of February 1995, the Quigg pants were displayed to the public at other than an international exhibition, prior to application, to negate the question, new or original?"

“Ms Quigg wrote:

"As to the issue of prior art publication, I wish to make the following points. The published photograph was taken in December 1994 and published without my prior knowledge in February 1995. The exhibition displayed many "one off" garments in order to gauge market reaction and the wrap round style of pants were not introduced into our standard range, and advertised as such until my design application was accepted. Minimal sales were made of this garment, as I understand is allowable under the designs act, to customers in my local area so that the product could be effectively tested in the marketplace. Product performance was monitored and it is worthwhile noting that my original sampling design was refined and altered until I was satisfied with its acceptance. The final prototype was then registered." (emphasis added)

“On the face of it these remarks admit that there was prior publication of a design. But what design? Taking the plain meaning of these words, it is my opinion that the registered design was not made public before the date of application.

“Be that as it may, the test for prior publication was stated in J. Rapee & Co. Pty. Ltd v Kas Cushions Pty Ltd 15 IPR 577:

"...if such material is to constitute prior publication , then the reader must from a fair perusal of the material be able at least to see the design in his mind's eye and the design or something substantially the same as the design should be disclosed with reasonable clarity."

“The photograph shows the trousers being worn rather than laid out flat so all the features of shape and configuration may be seen. Also whilst both Mr Grubi and Ms Quigg state the gazette was published in Australia in February 1995 no date of publication has been given. I am not satisfied that the design is disclosed with reasonable clarity. To be completely consistent, if my opinion was that the photograph published Ms Quigg's design it would be my opinion that the photograph in the Sunday Mail magazine of December 1987 would prior publish Mr Grubi's design no. 106631.

“Ms Quigg has provided ... an opinion , dated 31 October 1995, about whether trousers produced by Hostyle constitute an infringement of registered designs 106631 and 100535. The opinion does not show the Hostyle trousers. Reading the opinion allows a picture of the Hostyle trousers to be drawn. My picture is in Attachment 2 [not reproduced herein]. There is similarity between my picture and the front open view of 3 July 1995. There is little similarity, to my eye, between my picture and the front open view shown in the photograph lodged on 15 May 1995. For reasons already given I am basing this opinion on the representations of 15 May 1995 only. Therefore I shall consider the infringement opinion no further.

“To my eye the photograph of the front view closed is the same as the closed front view in the Grubi registration no. 106631.

“As I have some doubt about the clarity of the representations I believe I can look at the actual article manufactured by the registered owner. My authority for this is the judgement in Monier Ltd v Metalwork Tiling Co of Australia Ltd, 73 FLR 105, at 116, where Jacobs J. concluded that a particular pattern of the central ridge could properly be discerned, having regard to the fact that the pattern was "consistent with the actual configuration of [the registered proprietor's tile]."(emphasis added) When I put the Hostyle pants supplied by Ms Quigg into the front view closed position I still can see no difference from the closed front view as in 106631. When I look at the pair of pants in the front open view I see an outward taper of the legs from the bottom of the legs to the waist. I do not see this in the front flat view of 106631. Placing the article on the floor to try and reproduce the rear view open, to my eye there is an outward taper towards the waist from the bottom of the leg. The photograph of the rear view open in 124206 shows a taper towards the waist from somewhere near the knee region on the left hand side. The right hand side of the photograph has a less distinctive taper. Also visible in the front view open photograph and confirmed by looking at the pair of pants is that the waist opening is less than the width of the waist.

“Ms Quigg has provided a photocopy of Simplicity pattern 5529 for wrap around trousers. No date of publication in Australia has been quoted. The picture of the trousers is different to the representations in design no. 124206.

“There is no document before me that was publicly available in Australia before 15 May 1995, that discloses the present design. Previous registration 106631 is not for the same design. There are differences between the present design and 106631. The differences are that the legs taper outwards towards the waist from the bottom of the leg, whereas in 106631 the taper is inwards towards the waist, and that the waist opening is less than the width of the waist, which is not a feature of 106631. The issue in considering newness or originality of the design is whether these differences are immaterial or whether they are differences that are features commonly used in the trade. Mr Grubi's declaration makes no submission on this point. Mr Barr's letter of 20 December 1995 states:

"When shape is considered and the design of No 124206 is compared with that of No 106632, the most evident distinction is the cut of the leg. In No 124206, the leg as drawn tapers from waist to leg end, with symmetry about a line which is perpendicular to the waist. In No 106631, the same taper cuts the waist at an angle off the perpendicular."

“There is however no submission that these differences are immaterial or are trade variants.

In the absence of any such submission it is my opinion that the registered design 124206 is a new design over the disclosure of registered design 106631.”

Thus the Deputy Registrar was of the opinion that the period of registration should be extended.

Submissions

The informant’s submissions are summarized as follows:

Design No.124206 is invalid because the copied photograph representations are obscure and inconsistent with the drawing representations.

Design No.124206 is not new or original in the light of the prior art; eg. Mr Grubi’s designs, Nos. 106631 and 100535, show the feature of cross-tied flaps, which is the only characterizing feature in 124206.  There are no substantial differences between Design No.124206 and the prior art.

Re the articles bearing Ms Quigg’s and Mr Grubi’s designs filed by the former in August 1996:
any differences between the articles may be due to the different sizings rather than different designs.  Ms Osmond indicates that shapes can vary with size.

Some features of shape claimed by Ms Quigg as conferring novelty on her design are in fact trade variants or features commonly used in the trade, and may not be features of shape:  the pockets,  seams and hook and loop (Velcro) fasteners for example.

The way in which pants are laid out flat is crucial to their shape.

The outward taper from mid-calf to waist of the outside of the legs, which supposedly characterizes the registered design, is not evident in the copied photograph representations.

The relatively wide front section of the pants with Ms Quigg’s design, which supposedly characterizes the registered design, is also not evident in the photographic representations.

The registered design is not novel because the features in the statement of novelty are not novel.

The registered owner’s submissions are summarized as follows:

The overall concept of cross-over pants is known, in martial arts and in Bali for example. Mr Grubi is confusing the notions of “concept” and “design”.

Design No.124206 is characterized by a combination of features, viz: the hook and loop fasteners, back pocket outwardly tapered leg shape and relatively wide front section

The drawing representations are meant to be complimentary to and representative of the photographic representations. “Ms Quigg does concede a lack of artistic ability in the drawings but admits she was attempting to accentuate the puffiness of the fabric and the design.”

The two main differences between the registered design and the prior art are that (1) each leg slopes outwardly from the mid-calf to the waist, and (2) the front template is wider than the back template.

The open back view representation shows that the “side” seams on the rear portion of the pants and the fabric foldline are at varying angles; this gives the characterizing tapering effect. Also, Ms Quigg’s design is cut from four main leg sections.

The photos do not show the pants laid out flat; significant differences are apparent if Ms Quigg’s and Mr Grubi’s articles are in fact laid out flat.

The open view in the representations are more significant than the closed view “which really shows a method...”

Grading formulae are usually applied consistently to original block designs to achieve different sizes without distorting the original shape.

The photo in the Chef’s Gazette cited by the informant was a “one-off’ exhibition to gauge market reaction; the design of the pants was an earlier version and minimum sales were made.  Mr Grubi’s design was also published in newspapers before he applied for a design.

The registered owner relies on the reasons given in the opinion of the Deputy Registrar.

DECISION

The Deputy Registrar has dealt with the informant’s material relating to The Chef’s Gazette and Sunday Mail articles and has concluded that that material provides no basis to conclude that Design No.124206 is not new or original. Few submissions were made on this material at the hearing, and, for the reasons given, I agree with the Deputy Registrar’s conclusions; so I will focus my attention on the novelty of Ms Quigg’s registered design in the light of Mr Grubi’s earlier registered design.

The first issue to resolve is to determine the monopoly claimed by the registered design, since, generally, a determination of novelty is difficult if the boundaries of the monopoly are not clearly defined.

Re the photographic representations in Design No.124206, there is what appears to be the top of a shoe partially shown in one of the photographs, so one can assume that the pants are laid out on a floor. The fabric of the pants appears to be slightly crumpled, but not to the extent that I would conclude that the pants have not been laid out flat. There is nothing in the photographs to suggest that the pants have not been laid out in a “natural” position. To my eye, the open view photographic representations do not show any outward taper of the legs of the cross-over pants. The legs are reasonably well spread so the outside edges of the legs appear to be tapering slightly inwards towards the waist. (However, I can also imagine that if the legs were closed then there might be some outward tapering of the outside edges of the legs, but this is not shown in the representation).

The open view drawing representations in Design No.124206 clearly show an outward taper. The angle between the legs is slightly smaller than that shown in the photographs, so it is possible that the outward taper could be due, at least in part, to the legs being closer together; but the dominant feature which seems to cause the outward taper is a very wide waist, compared to the length of the pants and to the width of the leg openings. The photographic representations by comparison show a waist which appears to me to be somewhat wider than the waist of a normal pair of trousers but which is not as wide as the waist shown in the drawings.

Generally, I think the representations are a bit confusing;  Mr Baumann admits that the drawing representations filed by Ms Quigg were not well done, and some of the drawings appear to be rather exaggerated. Also I note that the registered owner’s submissions do not include argument that the representations are not inconsistent. Nevertheless, the representations have been registered and it is therefore incumbent upon me or any other interested party to interpret them.

As discussed above, there are variations between the open view representations, but looking at the representations per se there is nothing to suggest that any variations should be dominant, so I conclude that the scope of the registered monopoly is, prima facie, broad enough to include the shape of cross-over pants which may have either outwardly or inwardly tapering legs, and which may have a wide to very wide waist. It is not unusual for registered designs to include variations within the scope of the registration, see for example: D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224, so I think it is more likely that an addressee of the Register would assume that the variations in the features in the representations were deliberately meant to cover a range of alternatives, rather than assume some other alternative, say that some of the representations may in fact not be representative of the real design.

One or the other sets of representations show features such as Velcro tabs, waist ties, pockets, seams and a chequered pattern fabric. However, the statement of monopoly is claiming the shape and configuration of the cross-over pants.  In this matter I agree with the view that these other features are not features of shape or configuration, so they do not restrict the scope of monopoly claimed. In particular I think features associated with the seams are more related to patterns rather than shapes.

Re the matter of Travers Ltd’s Application, I think the principles set out in that case are clearly of some assistance to clarify designs law as it relates to articles of soft clothing, and ideally, when an article may assume “many arbitrary forms” the representations filed with an application for registration should show the article laid out flat and fully extended. However, if a design applied to an article of soft clothing has been registered, and if some of the representations happen to show a three-dimensional view of the article, I do not think it is appropriate to disregard those representations because of the principles in Travers Ltd’s Application. If a design has been registered then I think it is incumbent upon those dealing with any subsequent actions to take account of all the registered representations.

Furthermore, I think the principles in Travers Ltd’s Application should be applied with some care. The article in question in that case was a lady’s wrap-round skirt, which clearly is something of rather indefinite shape. However, I imagine that some articles of soft clothing could be characterized by a feature which would be best shown in a three-dimensional representation; a feature in articles such as floppy hats, shirt collars and brassieres for example.

Thus in the present case I am of the view that both the photographic and the drawing representations in Registered Design No.124206 should be equally considered, along with the statement of monopoly, in determining the scope of the monopoly claimed.

Before I consider whether the registered design is novel, I must also consider the effect of the statement of novelty.

The question arises in this case how the scope of the registered design is affected by the statement of novelty, since the registered owner has submitted that her design is characterized by the features referred to in the statement of novelty and therefore is novel in the light of the prior art.

Some assistance is provided in this matter by the Australian Designs Office  Examination Manual, at the following paragraphs:

“6.2Section 4(1) defines a statement of novelty as:

‘..in relation to a design, means a statement relating to the representations of an article to which the design is applied that indicates those features of the representations in respect of which novelty or originality is claimed.’

6.3The statement of novelty is used to highlight those portions of the design that the applicant believes are new or original, and thus distinguish it from any prior art.  This may be for the applicant's own purposes or, if requested by the examiner, to distinguish it from any close prior art.... 

It is not clear what effect a statement of novelty has on the protection of a design.  Certainly, it would not effect the scope of the monopoly being claimed.

It seems that its function is simply to point out to any interested party those features that distinguish a design from what has gone before and so, perhaps, to avoid, as far as possible, any contest as to the novelty or originality of the design.  In a related vein, the D.L.R.C.... considered that a statement of novelty would be particularly useful in infringement proceedings.

Whatever their purpose, statements of novelty are not common.  It could be that, in most cases, an applicant does not want to define the novel features, preferring instead to leave it the courts to decide in the event of any contest. 

Some applicants may also feel that a novelty claim is superfluous, since registration implies that the office considers the design to be new or original.

6.6In most, if not all, cases a request for statement of novelty will be the result of a contested objection to the novelty or originality of the design.  In this light, a statement of novelty should be requested where: 

1)there is close prior art which the examiner has or would otherwise use as an objection to the novelty or originality of the design,  and/or

2)the applicant wishes to rely on a surprisingly small or ordinary feature(s) to distinguish their design from that prior art.”

It seems therefore that a statement of novelty is not meant to affect the scope of the registration, otherwise it would be in effect no different to a statement of monopoly. I think a statement of novelty comes into its own when considering whether any differences between a registered design and the prior art are only “immaterial details” or “features used in the relevant trade” for the purpose of deciding whether the registered design complies with Subsection 17(1).

In my view, a procedure for determining whether a design is new or original in the light of a particular item of prior art should be as follows when there are statements of monopoly and novelty to consider:

1.The scope of the registration is first determined by referring to the representations and the statement of monopoly.

2.The prior art design is compared to the registered design.

3.A determination is made as to whether all the features within the scope of the registration are disclosed in the prior art. If all the features are disclosed, that is the end of the matter, the design is not new or original, and there is no need to refer to the statement of novelty.

4.If there are features in the design that are not disclosed in or different to those in the prior art, a determination is made as to whether the differences are only immaterial details or features commonly used in the trade.

5.The statement of novelty is considered as part of the determination in step 4 and it may suggest where novelty resides in the design.

I will now apply this procedure to the circumstances of this case.

Step 1 I have already done: I have decided that the scope of the registered monopoly is, prima facie, broad enough to include the shape of cross-over pants which have either outwardly or inwardly tapering legs, and which have a wide to very wide waist.

Step 2 requires me to consider Mr Grubi’s Design. (I shall confine my comments to his Registered Design No.106631, since his Registered Design No.100535 shows pants of a similar shape to those in 106631; the main difference being in the pattern of the fabric). Registered Design No.106631 is for an article entitled “trousers”, and monopoly is claimed in the shape, configuration, pattern and ornamentation of the trousers in the representations. There are 6 representations of a pair of cross-over type trousers, similar to those in Design No.124206. The representations show various open, closed, front and back views.

On visually comparing the representations in 106631 with the photographic representations in 124206, and putting aside features of pattern and accessories, I think the open views do show one difference in shape between the two designs. To my eye that difference is that Ms Quigg’s pants appear to be generally wider and more “low-cut” than Mr Grubi’s trousers, which look slimmer. In 106631 the waist width, relative to the length of the trousers, is less than that in 124206, thus generally giving Mr Grubi’s design a generally slimmer appearance.

Also, the distance between the waist and the crotch in Mr Grubi’s design is relatively greater than a similar distance in Ms Quigg’s pants; an imaginary triangle formed by the waistline and by lines from the top corners of the waist to the crotch is close to an equilateral triangle in 106631, but the waistline is much greater than the other two sides of the triangle in 124206. This gives the low-cut appearance to Ms Quigg’s design.

On visually comparing the representations in 106631 with the drawing representations in 124206,
the abovementioned “low-cut” appearance is less obvious, but still apparent, in some but not all of the drawings in 124206. The difference of the relative width of the waist is even more apparent in the drawings than in the abovementioned comparison with the photographs.

On comparing the closed views, there seems to be somewhat more overlap of the side flaps onto the front panel in 124206 than in 106631. By itself this may not be a significant difference, but I think more overlap would occur if the pants were relatively wide at the waist, thus providing more free material at the sides which can then overlap the front panel. Thus I conclude this slight difference in the closed views confirms the apparent difference in the open views that the design in 124206 has a relatively wider waist.

With regard to the tapering of the legs in the two designs, I see no significant difference between the taper shown in 106631 with the taper shown in the photos in 124206. Both sets of representations show the outside lines of the legs tapering inwardly to the waistline.

Re the supposed distinguishing feature of a relatively wide front section cf. the back section in Ms Quigg’s design, I am of the view that this feature is merely associated with the positions of the seams between the front and back sections, and I have already decided that features associated with seams are more related to patterns rather than shapes. I note also on this issue that on page 10 of his “Design infringement opinion”, Mr Carew states that “the remaining features of the seam lines constitute immaterial details which do not form part of the registered design”, and Ms Osmond reports that “the placement of seams is a commonplace design variant”.

Applying step 3 of my procedure, I have to determine whether Registered Design No.106631 discloses the features of  cross-over pants which have either outwardly or inwardly tapering legs, and which have a wide to very wide waist. Mr Grubi’s design shows inwardly tapering legs, so the first feature is disclosed. On the other hand, I consider that Mr Grubi’s design does not disclose a wide, low-cut waist, compared to the same shown in Ms Quigg’s design.  So I conclude that not all the features of 124206 are disclosed in 106631; and therefore I need to go to step 4 of my procedure.

Applying step 4 of my procedure,  I  consider that the relatively wide, low-cut waist in Design No.124206 is a visually substantial feature of the overall design and thus cannot be construed as insignificant or as an immaterial detail; and I have no evidence before me that it is a feature commonly used in the trade. Even if it was a feature commonly used in the trade, the registered owner has submitted that her design is a combination of features, and combinations of well-known features are commonly found to be novel and ingenious under designs and patent law. Under these circumstances, for the design to be found not novel or original, it would have to be shown that it was obvious to combine such well-known features, and I have no such evidence before me.

Applying step 5 of my procedure,  I note that the statement of novelty in Design No.124206 does not refer to the relatively wide, low-cut waist, and I am sympathetic to the informant’s submission that the features referred to in the statement of novelty do not confer novelty on the registered design: the back pocket, hook and loop fasteners and relatively wide front section compared to the back (a feature associated with the seams) are not features of shape or configuration, and the “exaggerated taper”, (which has been taken to mean “outward taper”) is a feature which is not common to all the alternatives covered by the scope of the registration. However I do not think this issue should be wholly determinative of whether the design is new or original. If in fact a design is novel it would be an injustice if it was found to be not novel on the grounds that the novel feature was not referred to in the statement of novelty, especially since statements of novelty are not mandatory and not commonly used. I note too that the Deputy Registrar’s opinion in this case refers to a novelty-conferring feature which is not in the statement of novelty.

Consequently, I think it is appropriate that I now enhance step 5 of my abovementioned procedure as follows:

5.The statement of novelty is considered as part of the determination in step 4 and it may suggest where novelty resides in the design, but novelty in the design does not have to be inherent in the statement of novelty.

In comparing the two designs as registered, I am satisfied that Design No.124206 is novel in the light of Design No.106631 because the former shows a design of cross-over pants with a relatively wide, low-cut waist, which is not disclosed in the slimmer Design No.106631, and which is a substantial and significant feature in the whole shape of Design No.124206.

I will now consider the articles submitted before and after the hearing.

I found that it was difficult to compare the two pairs of pants filed before the hearing, ie. the Chef pants (Mr Grubi’s design) and the Hostyle pants (Ms Quigg’s design), because they are different sizes. The parties submitted conflicting evidence as to whether shape changes with size in this type of article, so it is difficult to resolve this issue. Nevertheless, I made the following observations:

The Hostyle pants are size “M” and significantly larger than the Chef pants which are a size “S”. The former have an obviously wider waist because of the larger size, but in my view the relatively wider waist can be visually detected in the Hostyle pants (and confirmed by folding the waist down parallel to one leg to determine the relative length of the waist and leg) The Chef pants do not look as slim as those shown in Design No.106631, but in my view they do look slimmer and higher-waisted than the Hostyle pants.

When I placed the two pairs of pants on the floor and they were thus “laid out flat and fully extended” according to the principles in Travers Ltd’s Application, I found that there was no discernible difference in the amount of “taper”, it was generally inward, not outward. A difference however could be detected by holding the pants up vertically. With the waist stretched tight, the Hostyle pants did show a slight outward taper (when held near a vertical surface for comparison), but when the waist tension was slackened, the outside edges of the pants became approximately vertical (ie. zero taper). However, when the Chef pants were held vertically they tended to hang with zero taper whether or not the waist was stretched tight.

I also noted that the seams and accessory features were not visually outstanding in the Hostyle pants; even less so than in the representations.

Generally I think it can be said that my observation of the articles’ appearance as described above does not conflict with my conclusions based on the registered designs.

There were two articles filed by the registered owner after the hearing, originally “from third party manufacturers”; I have no details of when these articles were available to the public. The Fancypants are very similar to the Hostyle pants, they also showed some outward taper when held vertically with the waist stretched tight. The Fighting Fit pants were not particularly relevant to this case; they are a different type of design, with a narrow front and relatively large elasticised back, and they showed no outward taper.

Taking all the above matters into account, I am satisfied that Design No.124206 is novel in the light of Design No.106631 because the former shows a design of cross-over pants with a relatively wide, low-cut waist, which is not disclosed in the slimmer Design No.106631, and which is a substantial and significant feature in the whole shape of Design No.124206.

CONCLUSION

I have found that Ms Quigg’s design is new and original in the light of the material presented by Mr Grubi; thus I extend the term of registration of Registered Design No.124206. 

On the matter of costs, the informant has not been successful in showing that the registered design is not novel, and costs would normally follow the event. However, the reasons and evidence submitted by the registered owner in defence of her registration were, in the main, not particularly useful or relevant; and I think the informant had some justification in pursuing his case because his own design is similar to the registered design, the representations in the registered design are somewhat confusing, and the features in the statement of novelty do not in fact confer novelty on the registered design. Taking all these matters into account, I think it is appropriate that I make no award of costs.

John Welsh
Delegate of the Registrar of Designs

Solicitor for the registered proprietor:  Michael Baumann, Canberra

Solicitor for the informant:  Greves Solicitors, Brisbane.