Reckitt Benckiser Inc

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Designs 303976, 303977, 303978, 303979, 304539, 304540 and 304541 in the name of Reckitt Benckiser Inc, and examination.

Delegate: Dave Herald

Representation:
Applicant: P Whenman, Patent Attorney of F.B. Rice & Co

Decision:
Designs 303976, 304539, 303977, and 303979 revoked – having regard to certain publications in the owner’s annual report (which was published shortly before the priority date).

Designs 303978, 304540 and 304541 were found to be new and distinctive – although the owner was given an opportunity to seek amendment prior to completion of examination.

Background

These applications relate to a range of containers bearing a label having a clear circular central area, with radiating stripes. The applications were filed on 24 August 2005, claiming priority from European application 301437-0001/-0007 filed 25 Feb 2005.
All applications were filed with the following statement of newness and distinctiveness
Each feature of the design considered separately or in combination with any other feature or features.
On 7 Dec 2005 the applicant requested amendment of name of the Designer, and an amendment to the statement to read:
Newness and distinctiveness reside in the features of the design as shown in the representations.
The designs were sealed on the following day (8 Dec 2005). And while the name of the designer was subsequently amended, on 20 Feb 2006 the applicant was advised that the amendment to the statement could not be effected as the designs had been registered.
Following requests for examination filed by the owner, the examiner issued adverse examination reports on 6 June 2006 – citing material from the internet relating to the design owner’s product ‘Cillit Bang’. For reasons unknown to me, the owner apparently made no effort to deal with the examination reports during the period allowed for examination. Rather the owner chose to respond to the first examination reports by filing a request to be heard with respect to each of the Designs – with no submissions. I observe that conducting a hearing in an environment where the Registrar has not had the prior benefit of considering any contrary arguments to the first examination reports is, to say the least, a quite unsatisfactory approach to examination. Accordingly, prior to the hearing I requested the owner provide an outline of submissions and contentions.
Following receipt of those submissions, the examiner conducted some further searches to address issues raised in the response – identifying a range of documents on the internet with an apparent publication date prior to the priority date. Included in those documents were a half-yearly report and an annual report of the applicant company – which the applicant has subsequently conceded were published before the priority date of the designs. These publications showed containers like those of the various designs, bearing a label of the type indicated in the designs. However the label also included prominent lettering such as the words ‘Cillit Bang’.
Additionally, on 1 August 2007 I raised a concern I had formed about the relationship of the designs to the colours shown in the representations. In particular, whether it was intended for the designs to be limited to the colours shown in the representations – and how the designs showing the product in grey-scale were to be interpreted.
At the hearing, the owner indicated an intention to seek amendment of the product name (to address the colour issues), and argued several issues:
a.   The request under s.28 to amend the statement of newness and distinctiveness should be processed – even though the designs have been registered;
b.   A ‘proper’ statement of newness and distinctiveness had to refer to plural visual features;
c.   The current statement of newness and distinctiveness should be interpreted as meaning no more than all the features of the design shown in the representations;
d.   When applying the informed user concept of s.19(4), the informed user would not have awareness of products that were only available in other countries at the priority date – and as a result could not find the designs lacking in distinctiveness having regard to those publications; and
e.   The designs were distinguished from the citations through the absence of any lettering.
I shall consider each of these issues in turn. I should note that the first two issues, as well as the amendment of the product name to insert reference to colour, are fundamentally related to the inability to amend a statement of newness and distinctiveness after registration.
Amendment of the statement of newness and distinctiveness
Mr Whenman was concerned about the interpretation to be given to the statement of newness and distinctiveness as filed on each of the designs, which read:
Each feature of the design considered separately or in combination with any other feature or features.
On the afternoon of 7 December 2005 the applicant filed a request to amend inter alia the statement of newness and distinctiveness. The Designs were registered the following day (8 December 2005), as part of routine batch processing. Some time later the amendment request came to the attention of the relevant officer within the Designs Office, and on 23 February 2006 the owner was advised:
You have requested the above amendments on 7 December 2005 while the cases were being registered by the Registration section (the registration date is 8/12/05). Therefore the Statement of Newness and Distinctiveness can no longer be amended. …
The applicant/owner took no further action at that time.
At the hearing, Mr Whenman argued that the amendment could still be progressed under the provisions of s.28 – on the basis that he had filed the request to amend prior to the registration of the Design, and that the registration of a design did not bring actions pending under s.28 to a conclusion.
The difficulty with this submission is that the date of filing a request to amend under s.28 is not of primary significance to the operation of s.28. While s.28 allows the applicant to request an amendment, the operative action of amendment involves the exercise of a discretionary power by the Registrar. And to exercise that power, the Registrar must assess compliance of the request with the statutory requirements at the time of the exercise of that power – not as at the time the request was filed. Consequently, if the statutory ability to make an amendment under s.28 ceases as a result of registration, the fact that the request was filed before registration does not provide a basis for the Registrar to make the amendment after registration.
The practice of the Designs Office since the commencement of the 2003 Act has been that the statement of newness and distinctiveness cannot be amended after a Design has been registered. The practice is predicated on the fact that s.66(6) is limited by its operation to matters that are on the Register, and the fact that the statement is not included on the Register [which is express in regulation 9.01(d), and inherent in the wording of s.19.]
However the logic inherent in this approach assumes that upon registration any amendments have to be by way of s.66(6) or regulation 9.05. In particular, it assumes the amendment provisions of s.28 have no operative effect – on the assumption that once a design has been registered there is no longer an application that can be amended. However in my view the Designs Act provides a continuing existence to the ‘application’, such that it exists indefinitely subsequent to registration. The following provisions of the Designs Act are illustrative:
·s.33 of the Designs Act provides for lapsing in a number of circumstances. If the owner requests publication or registration of each design in the application, and deals with any formality difficulties, there is no provision that lapses the application. In particular, there is no lapsing of the application associated with the step of registration.
·s.45 sets out the procedure for registering a design. The procedure entails entering in the Register particulars that are ascertained from the design application as set out in s.111 and regulation 9.01. That process does not entail any change in the status of the application. Rather it creates a register entry derived from information contained in the application. That register entry is quite separate from the application [with the notable exception of the statement of newness and distinctiveness, where the Register merely notes the existence of such a statement in the application.] Importantly, registration of a design contained in an application does not change the application into something else – the application continues as ‘the application’.
·The continuing status of an application is inherent in the wording of s.36(2)(b). Similarly s.36(2)(a) together with regulation 4.02(1)(b) expressly prevents a request for registration after another design has been registered – which would not be required if the status of applicant/application ceased as at registration.
·s.60(1)(a) provides, 'after the design is registered', that 'the design application in which the design was disclosed' must be made OPI. This is predicated on the continuing existence of the 'design application' after registration.
Having regard to these issues, I am of the opinion that registration of a design does not terminate the existence of a design application, or change the design application into something else. S.28 does not contain any express temporal limitations – such as limiting its operation to applications where a design has not been registered. Thus s.28 remains available to amend documents on the design application irrespective of whether the design has been registered. And consequently s.28 is potentially available to amend the statement of newness and distinctiveness, which only exists on the application.
I need to interpose here to observe that while it is possible to amend the application under s.28 after registration – that doesn’t mean that s.28 amendments after registration affect the monopoly rights in the Design. The primary rights of a Design are established by the entry in the Register. And the Register can only be amended by way of s.66 and/or regulation 9.05 [with their associated limitations on the amendment.] An amendment of the design application after grant does not amend the Register. Nor does it enliven a basis to amend the Register to align with the amended application (for example, by asserting a clerical error or obvious mistake by reason of the consequential inconsistency between the application and the Register); any amendment to the Register must of itself meet the conditions of s.66 or reg. 9.05. That is, post registration amendments of the application in relation to matters which are entered on the Register prima facie have no purpose – and consequently discretion might apply to refuse such amendments on the basis of lack of purpose.
Different considerations apply to the statement of newness and distinctiveness. The statement is not present on the Register, so amendment under s.66(6) is not possible. On the face of it, the fact that the statement exists on the application, and the application has continuing existence, suggests that the statement might be amendable under s.28 at any time. However the statement has a fundamental difference from other elements of the application and design in the way it is defined in s.19(2)(b), which relevantly states:
If the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness)… [my emphasis]
The use of the past tense in referencing the statement is significant. It is a clear indication that the relevant statement of newness and distinctiveness is not a ‘present’ statement in an environment of ongoing amendments to a statement. Rather it is a reference to a statement that existed at some earlier date. It seems to me that there are only two possible reference points for identifying the statement of s.19(2): the date of filing the application, or the date of registration. In resolving this, I note that s.28 clearly encompasses amending a design application at large as a prelude to registration. If the legislative intention was to limit the s.19(2) statement to the text that was present at filing, s.28 would have made this clear by expressly excluding that statement from the operation of s.28. Conversely, providing the ability to amend the statement prior to registration would seem generally consistent with a policy intent of enabling amendments at large prior to registration – subject only to the prohibition of not adding new matter [as set out in s.28(3)]. I therefore conclude that the definition of the statement of newness and distinctiveness in s.19(2) is a reference to such a statement as in existence immediately prior to registration.
It follows, in my view, that while the applicant for the present case can amend the text said to be the statement of newness and distinctiveness as it currently exists on the application file, the amended text does not constitute the statement of newness and distinctiveness as defined in s.19(2). That statement continues to be the statement of newness and distinctiveness as it existed immediately prior to when the design was registered. Consequently, while the application can be amended under s.28, the statement as defined under s.19(2) cannot be so amended.
This raises the question of whether the Registrar should now amend the application under s.28. S.28(1) involves a discretionary element – the Registrar may amend a design application. As currently advised I am inclined to refuse to make the amendment because no useful purpose would be served by its making; it would merely be adding text to the application that serves no statutory purpose, and might confuse third parties as to what constitutes the statement. However I will not formally refuse the amendment at this time – I think I should first give the owner an opportunity to demonstrate a useful purpose for the amendment.
Having reached the conclusion that it is not now possible to amend the statement of newness and distinctiveness, there is the fact that the applicant sought amendment of the statement the day before registration occurred. At the hearing I raised the question of whether, given the loss of ability to amend a statement following registration of the design, there is any parallel to be drawn from British Sky Broadcasting v Registrar of Trade Marks 58 IPR 216. In that case a potential opponent filed a request for an extension of time to file a notice of opposition on the evening immediately prior to the day of registration. The court held (at para 42) that, on the proper construction of the Act and Regulations
the registrar was not empowered to register the trade mark without first considering the late application for an extension of time, which was filed before the registration of the trade mark, on its merits.
That is, given various provisions of the Trade Marks Act and Regulations, the Registrar was obliged to deal with the request for an extension of time before she could proceed with registration. And failure to deal with that request constituted an error of law which rendered the registration a nullity.
The conditions for registration under the designs act are set out in section 39(2) [and in s.40(2), which is not relevant to the present cases.] In substance, there must be compliance with the formalities check, and the design must not be one which the registrar is required to refuse. Significantly, there is no direct linkage to a request under s.28. The only linkages arises in sections 41 and 42 – which are specifically in the context of overcoming an adverse formalities check, rather than amendments under s.28 ‘at large’. In the present cases, the requirements of s.39 were fully met in the first instance. Consequently there was no statutory obligation to consider any filed s.28 amendments prior to registration occurring. That is, while it is administratively desirable to deal with a request to amend a statement of newness and distinctiveness before registration occurs, there is no basis to conclude that the registrations are a nullity because the requests to amend were not considered prior to registration – and therefore no basis to now deal with the proposed amendments in a pre-registration context.
Informed User
The examiner has identified a large number of documents alleged to anticipate the design, on the Internet. Of particular significance are an annual report (and a half-yearly report) of the owner, with an associated PowerPoint presentation. The owner has conceded that the documents were publicly available prior to the priority date. Close inspection of the documents indicates some small differences in detail from the present designs (such that an absence of newness cannot be found). However the contribution of the differences to the overall appearance of the product is quite small, such that the question of distinctiveness arises.
Under s.19, the test for distinctiveness must be made by applying the standard of the informed user. Mr Whenman argues that an informed user (being a relevant person in Australia) would not have been aware of the reports and PowerPoint presentations. Accordingly, when applying the standard of the informed user, those documents would not come into consideration – and a finding of lack of distinctiveness over those documents was not possible.
I disagree with this approach to the informed user standard. In the context of Patents, there is a 400 year history of the test of obviousness being based on what the person skilled in the art actually knew as common general knowledge (see 3M v Beiersdorf 1A IPR 231). In recent times, the Patents Act 1990 has been amended to expand the test for obviousness to include certain ‘published’ documents in the prior art base – but the ability to rely on such documents is constrained by a number of conditions. However the Designs Act 2003 has no equivalent distinction in the type of documents that can be considered for newness versus distinctiveness. Section 15(2) defines the prior art base. Section 16 defines how the prior art base is applied to the tests of newness and distinctiveness. Importantly, s.16(2) places no qualification on the type of document to be used for the test of distinctiveness. Consequently (and unlike the situation with patents) there is no difference between the class of documents that can be considered for newness, and for distinctiveness.
The role of the standard of the informed user arises when applying the test for distinctiveness set out in s.19. S.19(1) sets out the consideration of overall impression, requiring more weight be given to similarities than differences. Subsections (2) and (3) set out a number of matters the decision maker must have regard to. Subsection (4) sets out the ‘standard’ to be applied when making the decision – that is, the standard of the informed user.
The issue of the informed user was discussed in the ALRC report that led to the Designs Act 2003. In paragraph 5.21, the ALRC commented:
Objective test. Whether or not a design is distinctive is intended to be an objective test. The court decides the issue by placing itself in the position of the informed user. It is not a subjective test whereby an ‘informed user’ assesses distinctiveness by reference to his or her own knowledge and the court simply adopts the informed user’s assessment. It is still a matter for determination by the court. The informed user describes the standard, not who can give evidence.
That is, the informed user standard sets the standard to apply when comparing the design with an item of prior art. It requires the tests of s.19 to be applied from the perspective of an informed user – as distinct from someone who knows nothing about the relevant products, or from someone that is an aficionado of such products. In particular, the informed user standard is not a constraint on whether a particular item of the prior art can be considered – its role is limited to the standard to be applied when determining whether the design is distinctive having regard to a particular item of the prior art.

Accordingly I consider the owner’s published material to be available for assessing the question of distinctiveness, it being material that was published prior to the priority date.
Distinctiveness
The ultimate issue is the question of whether the designs are distinctive over the prior art designs. The designs are directed to containers of various types bearing a label. The label may be described as bearing a central circular area clear of any markings, with radiating bands extending to near the edge of the label area. The prior art designs show containers of the same type and colour, and the same pattern on the label. However the label contains additional textual material in large prominent lettering.
I should first observe that on close inspection it is apparent that there are small differences from some of the designs – such as a slightly different shape to the trigger handle of a squeeze bottle, or to the shape of the nozzle area of the bottle. At the hearing the attorney expressly did not seek to rely on these differences as forming a basis for distinctiveness. I am of the view that these differences have little impact on the ‘overall impression’ of the product – which is dominated by the colours used, and the pattern, on the label. That is, I do not think that such differences give rise to distinctiveness.
Mr Whenman sought to argue that the designs were distinctive because they did not contain the lettering that was present in the citations. He argued that the design was that shown in the representations – which did not include any lettering as might be expected if a brand name was applied to the product. The curious thing about this argument is that one might query the commercial value of such a design registration – as the application of any additional visual features (such as brand identification or user instructions) would (by this argument) readily avoid design infringement. (It is also curious that the priority document includes designs bearing some labeling text, but that apparently no corresponding designs have been sought in Australia.).
Underlying this issue is the scope of the design protection that is granted under the Designs Act 2003. Specifically, does a design derive from the appearance or overall impression of a product having regard to ALL visual features present in a product? Or is it from the appearance/overall impression as affected by SOME of the visual features present in a product. For example, if a design is registered where the visual feature is the shape of an object, would the application of an additional prominent visual feature such as a decal be sufficient to avoid infringement? If the former approach is correct, the mere addition of an extra visual feature (such as a particular color, applying a label, etc) to a product would result in a different design, and sales of that product would not infringe the earlier design – rendering a design right to be of extremely limited value.
This issue involves the statutory relationship between a product and the visual features that unite to constitute the design, and the requirements for determining distinctiveness of a design. In this regard the definition of design in s.5 is important:
design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product
This definition invokes a causative relationship between the appearance and visual features. Significantly, that causative relationship is not tied to ‘the visual features of the product’, but to ‘one or more’ visual features of the product. That is, as a general proposition a design is constituted by some only of all visual features present in the product.
This interpretation is consistent with a number of items in the ALRC report. For example, paragraph 6.17 (discussing the desirability of identifying new and distinctive features) states:
Correct identification of distinctive features will broaden the scope of protection for the registered design. If the distinctive features are not identified and the visual representations in the application form show only the whole product bearing the design, there will be an inevitable tendency for protection to be limited to the 'one individual specific appearance' shown in those representations.
Similarly para 6.21, in discussing the assessment of newness and distinctiveness, states:
It is important to note that these principles of assessment also apply where the new and distinctive feature relates only to part of the product. For example, if a cup is designed with a new and distinctive handle, the design owner will be able to register the design of the cup and identify the handle as the new and distinctive feature for which protection is sought. If a competitor takes the handle and places it on a differently shaped cup, the court will be directed to consider when determining whether the exclusive right has been infringed whether the design of the new cup is substantially similar in overall impression to the design of the old cup, paying particular attention to the designs of the handles in each case but not disregarding other parts of the cups. The design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.
I think the approach followed by the ALRC is that a design is not necessarily restricted to all the visual features of the product as shown in the representations. Clearly the ALRC intended a situation where certain visual features could be indicated as having a status different from other visual features, with the consequence, as stated in para 6.16, that ‘identification of distinctive features will broaden the scope of protection for the registered design’.
It needs to be stated here that ALRC recommendation 47 was only accepted in part. Recommendation 47 included a requirement that applicants should be required to identify new or distinctive features of a design on the application form for registration. The Government response indicated that this should be optional. But neither the ALRC nor the Government response addressed the practical issues of how representations of designs are drafted – where there is frequent use of dotted and solid lines (and other drafting techniques) to distinguish between visual features present in a product. In practical implementation, I think the identification of new or distinctive features manifests itself in two quite distinct (but not exclusive) ways:
a.the inclusion of a statement of newness and distinctiveness; and
b.the manner in which the design is presented in the representations, using techniques such as dotted and solid lines (and other drafting styles), to discriminate between the new or distinctive visual features of a design, and the generic visual features of the product.
It is also appropriate to note that most design representations are by way of black and white line drawings. In this context, it should be remembered that colour is a visual feature (see ALRC recommendation 8 which recommended express reference to colour, and the Government response asserting that a reference to colour would not add anything to the definition and may cause confusion). Where the design representation shows a product in black and white outline with no colour indicated, would the design be anticipated by a product where the only difference was that it had a particular distinctive colour? And would the production of a product having all the features of the design, except that it was produced in a distinctive colour, avoid infringement merely because it had that extra visual feature of a distinctive colour? In my view, there is no legislative or policy intent to limit the scope of design protection in such a manner.
In my view the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.
Informed user standard for the present designs
The products the subject of each of the present designs may be conveniently described as relating to household cleaning activities. In my view the relevant informed user is a person having domestic responsibilities for household cleaning activities, and is selective when purchasing cleaning agents.
Statement of newness and distinctiveness
As previously noted, the statement of newness and distinctiveness (as defined under s.19 of the Act) for each of these designs is:
Each feature of the design considered separately or in combination with any other feature or features.
I am obligated under s.19(2)(b) to assess distinctiveness by having regard to the particular visual features identified in the statement, and if those features in the design 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.
The construction of this statement is problematic. It doesn’t identify any particular visual feature or features of the design. It merely refers to features, with an ambit claim of them being alone, or combined with one or more other features. Taking this at its simplest, I could opt to identify a visual feature as the shape of the basic container as shown in each of the present designs – in isolation from any other feature shown in the design – leading to the conclusion that all the present designs lack distinctiveness since the basic container is clearly shown in the anticipatory documents. And as the statement cannot be amended in any effective manner, this conclusion would inevitably lead to revocation of all designs.
However, I am not satisfied that this is the proper approach to take to such statements of newness and distinctiveness. I think that it is proper to recognize that with the implementation of the Designs Act 2003 the significance and use of the statement of newness and distinctiveness was not well understood by users. And this led to some users including statements like those of the present, supposedly to keep the owner’s options open. In the absence of identification of any specific visual feature in the statement, I think the preferable construction of such ambit statements is to interpret them in a manner such that the design is most likely to satisfy the requirement of being distinctive. That means interpreting the statement as being a reference to the combination of all visual features of the design as shown in the representations [which, arguably, means that the statement adds nothing to what is shown in the representations.] In what follows, I have interpreted the designs on this basis.
Consideration of designs 303976, 303979, and 304541
These three designs show a bottle with a trigger spray nozzle, with a label area. The label area has a border, a white background, and bands radiating from a central white region. Design 303976 has colour representations which show the bottle in purple, the nozzle green, the edge of the label being green edge, and the rear side of the bottle is shown with a plain green label. Design 304541 is substantially identical but uses yellow in place of green. Design 303979 is similarly substantially identical – but represents the design in gray-scale
The Reckitt Benckiser ‘Full Year Results 2004’ dated 9^th February 2005 (referred to hereafter as the ‘Annual Report’) includes, under the heading of ‘Exciting new products for 2005’, two images of a similar bottle. One has a purple bottle, a green trigger spray head, and a label with green edging, white background and radiating red bands. The other is the same except for the trigger spray nozzle being red, and the edging on the label being orange. There are some differences in the shape of the spray head, but in the context of the overall impression, those differences are minor and not distinctive. The label area is the same – except that the bottle in the annual report has labeling text emblazoned on the label.
In my view, an informed user would immediately recognize design 303976 as being incorporated in the bottle as shown in the Annual report – albeit with the present design not including any labeling text, and despite the small differences in the trigger. Consequently I conclude that design 303976 lacks distinctiveness over the publication in the Annual Report, and should be revoked.
On the assumption that design 304541 is limited to the particular colours shown in the representations, I am not satisfied that the informed user would reach the same conclusion; the colour used on the spray head is distinctively different, and stands out in the overall impression of the bottle. However it is not completely certain that the design should be interpreted as being limited to the particular colours shown in the representations. Importantly, each design must be interpreted in its own right – it is impermissible to refer to other designs (in particular, 303976 and 303979) to reach a conclusion about how colour is used in the present design. [See, for example, Pfizer Inc v Commissioner of Patents [2005] FCA 137]. And common drafting practice uses colour to highlight different visual features, rather than specifying the actual colour of the visual features. A suitable Statement of Newness and Distinctiveness could have made clear that the design involved the colours shown in the representations, but it doesn’t. On balance, I think the use of colour in the representations is best interpreted as indicating actual colours – in which case this design is new and distinctive over the prior art. However given the potential uncertainty about how the colour in the representations is to be interpreted – before concluding the examination I shall give the owner an opportunity to clarify that the design is limited to the specific colours shown in the representations.
The representations of design 303979 are in grey-scale. The use of grey scale is consistent with a representation that the various elements might be of any colour – without indicating any particular colour. This is certainly typical drafting practice for representations. Apart from the use of grey scale, the design is identical to that of 303976. In addition to the bottle discussed in the context of 303976, the Annual report shows another bottle having a red trigger spray nozzle and an orange edge to the label border. This bottle is also shown in the Reckitt Benckiser ‘2004: Half year results’ of 26 July 2004, under the heading of ‘More new products’. Like design 303976, I conclude that design 303979 lacks distinctiveness over the publication in the Annual Report, as well as the earlier ‘half year results’.
At the hearing the attorney indicated a desire to limit Design 303979 to the specific grays shown in the representations. The relevant consideration for this amendment is whether the design before amendment in substance discloses the use of the particular grays as shown in the representations [s.66(6)(b)]. As I have previously indicated, most design representations are provided in black and white, or grey scale – with colour not being a visual feature of the design. At most the grey-scale is used to represent regions of contrasting colour, hue, saturation or the like – with no disclosure of any particular colour. There is nothing in the present representations or other documentation to indicate that the grey scale was being used in any different manner. Consequently the grays in the grey scale do not constitute a disclosure of a particular set of colours. It follows that an amendment to convert the particular grays of the grey-scale used represent features of the design to visual features of the design would result in the inclusion of matter that was not in substance disclosed in the original design application – and would therefore not be allowable under s.66(6)(b).
Consequently, I do not believe that the lack of distinctiveness over the publication in the Annual Report, as well as the earlier ‘half year results’, can be overcome by amendment of this design – and it should be revoked.
Consideration of designs 303977 and 304539
These designs show a container with a threaded lid. On the wall of the container is a label with a clear central area, and radiating bands. In 304539 the representations show the container in purple, with a purple lid. The label has a white background, light-blue edge, and radiating red bands. The representations for 303977 are substantially identical, except they are in gray scale. The use of grey scale is consistent with a representation that the various elements might be of any colour – without indicating any particular colour.
The Annual Report includes under the heading of ‘Exciting new products for 2005’, two images of similar containers. Both have a purple body; one has an orange lid, while the other has a purple lid. The present designs profile the underside of the container. The Annual Report does not show that view, but in the context of the overall appearance of the product, I doubt that the underside view has any material impact of the appearance of the product. Like for designs 303976, 304541, and 303979, these designs do not include any labeling text, whereas the container shown in the Annual Report includes labeling text. In my view, an informed user would immediately recognize both 303977 and 304539 as being incorporated in the containers shown in the Annual report.
At the hearing the attorney indicated a desire to limit design 303977 to the specific grays as shown in the representations. As discussed with respect to design 303979, I do not consider that such an amendment would be an allowable amendment – as it involves the conversion of a drafting tool into a disclosure of substance.
Consequently I conclude that both designs 303977 and 304539 lack distinctiveness over the publication in the Annual Report. Furthermore I do not believe that the lack of distinctiveness of either design can be overcome by amendment, and accordingly both designs should be revoked
Consideration of designs 303978 and 304540
These two designs relate to a squeeze bottle with a push-pull valve opening on the cap. Design 303540 shows a purple bottle with a yellow cap, and a label like in the other designs (but having a yellow edging). Design 303978 is for the same type of bottle, but differs by being represented in gray scale. The Annual report does not depict any squeeze bottles. The only similarity with containers shown in the Annual Report is the label. I am satisfied that these designs are distinctive over the owner’s Annual Report
The additional material cited by the examiner included the following internet web page retrieved from the ‘WayBack Machine’:

This web page shows a squeeze bottle of the same type as these designs, carries the brand name that is used in the Annual Reports, and has a region of red radiating bands on the label. However the arrangement of the bands on the label is significantly different to the present designs. On the web page, the radiating bars only extend in a semicircle (not a whole circle), and do not extend over the entire label. In my opinion, the current designs are distinctive over the products shown on this web page.
I should note that the scope of design 303540 vis-a-viz the role of colour is unclear. Also, at the hearing the attorney indicated an intention to limit the design to the specific colours shown in the grey scale. However these issues of colour are not per se a ground of revocation.
Conclusions

I have found as follows:
a.A request to amend an application under s.28 can be given effect even after a design has been registered. However the statement of newness and distinctiveness is defined by s.19(2) to be that statement as it existed at registration, not as subsequently amended. As a result, the requested amendment would not amend the statement as defined under s.19(2). Unless the owner can indicate a useful purpose, I should exercise discretion to refuse the requested amendment to the statement of newness and distinctiveness;
b.While it is administratively desirable to deal with a requested amendment of the statement of newness and distinctiveness prior to registration, a failure to do so does not render the registration a nullity.
c.The concept of informed user does not determine which documents can be considered when assessing distinctiveness. It merely sets the standard to be applied when assessing distinctiveness against an item from the prior art base.
d.In the present case, the informed user is a person having domestic responsibilities for household cleaning activities, and is selective when purchasing cleaning agents.
e.It is appropriate to construe an ‘ambit’ statement of newness and distinctiveness that fails to identify specific visual features, but merely refers to all features either alone or in combination with other features, as referring to all the visual features in combination as shown in the representations.
f.Designs 303976 and 304539 lack distinctiveness over the publication in the owner’s 2004 Annual Report. Furthermore it is not apparent to me that the lack of distinctiveness of these designs can be overcome by amendment. Accordingly, unless a notice of appeal is served on the Registrar within one month of the date of this decision, or upon discontinuance of any such appeal, I revoke designs 303976 and 304539.
g.Designs 303977 and 303979 lack distinctiveness over the publication of the owner’s 2004 Annual Report. Both these designs are represented in grey scale. The attorney indicated a desire to amend these designs to limit them to the specific greys as shown in the representations. I do not consider such an amendment would be allowable, as it would convert features of a drafting tool used to represent that colour was not a visual feature, into the disclosure of a specific colour as a visual feature. It is not apparent to me that the lack of distinctiveness of these designs can be overcome by any other amendment. Accordingly, unless a notice of appeal is served on the Registrar within one month of the date of this decision, or upon discontinuance of any such appeal, I revoke designs 303977 and 303979.
h.Design 304541 is distinctive over the publication of the owner’s 2004 Annual Report – assuming the design is construed as being limited to the colors shown in the representations. The preferable interpretation of the Design is that it is so limited. In the circumstances it is appropriate to allow the owner two months to seek amendment of under s.66. In the absence of any such request, I will proceed to determine that examination has been concluded, and that the provisions of s.67 will apply.
i.I have found that designs 303978 and 304540 are distinctive over the prior art identified by the examiner. However the scope of design 303978 vis-à-vis the role of colour is uncertain; and the attorney indicated a desire to limit 304540 to the specific greys shown in the representations [an amendment which prima facie would contravene s.66(6)(b)]. In the circumstances it is appropriate to allow the owner two months to seek amendment of these designs under s.66. In the absence of any such request, I will proceed to determine that examination has been concluded, and that the provisions of s.67 will apply.
D Herald
Deputy Registrar of Designs
2 January 2008

[2008] ADO 1

2 January 2008