Reckitt Benckiser N.V - [2008] ADO 3

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS

Re:Designs 300328, 302124, 302125, 302126, 302127, 303986 and 303987, all in the name of Reckitt Benckiser N.V, and examination.

Delegate:

Dave Herald

Representation:

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

Decision:

Designs 300328, 302126, 302127, 303986 and 303987 are distinctive over the cited anticipations, and examination should be taken as being complete.

Designs 302124 and 302125 lack distinctiveness over the owners Trade Marks 792626 and 846593 respectively, and are revoked.

Background

This matter concerns a series of designs for soap tablets intended for use in dishwashers.
A representation of each design is shown in the appendix. Colour is a significant element of each of the designs, and for the avoidance of doubt it is appropriate that I indicate the colours for each of the designs:

300328 – white and blue body with a red circle;
302124 – a body made up of a light blue layer, a white layer, and a mottled blue layer, with a red ball;
302125 – a body made up of a light blue layer, a white layer, and a mottled blue layer, with a white ball;
302126 – a body made up of a yellow layer, a white layer, and a mottled blue layer, with a red ball;
302127 – a body made up of a yellow layer, a white layer, and a mottled blue layer, with a white ball;
303986 – light and dark blue body with a white circle;
303987 – white and blue body with a white circle.

The priority dates associated with these designs are:

300328 – 11 Feb 2004
302124, 5, 6, 7 – 23 June 2004
303986, 7 – 30 Nov 2004.

and I am satisfied that the present designs are prima facie entitled to these priority dates.

During examination the examiner cited various ones of the following against the designs, objecting to a lack of distinctiveness.

Design 300328 (see above)
Design 300329. The representations are in greyscale, with no indication of any particular colour.
Trade Mark 792626. The endorsement includes “The lower part of the tablet is white, the upper part is blue and the sphere is red.” The trade mark with this endorsement was publicly available before 2004.
Trade Mark 846593. The endorsement includes “The lower part of the tablet is white, the upper part is blue and the sphere is red.” The trade mark with this endorsement was publicly available before 2004. The trade mark is owned by the design owner, and its registration was opposed. I note that evidence filed by the owner during the opposition asserts that ‘the tablet the subject of this {trade mark} application was launched in Australia on 3 October 2001…’.
Trade Mark 949959. There is no reference to colour in the Trade Mark itself or the endorsement. This trade mark was publicly available in 2003.

Representations from each of these citations are also included in the appendix.

At the expiration of the time for completion…

Grounds of appeal

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

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

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

Consideration

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

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

Continue reading Reckitt Benckiser N.V

Details

AGLC: Reckitt Benckiser N.V [2008] ADO 3
Case: [2008] ADO 3
Decision Date: 5 March 2008

CaseChat Overview and Summary

This case involves the examination of seven soap tablet designs for dishwashers, submitted by Reckitt Benckiser N.V, before the Deputy Registrar of Designs. The applicant was represented by P Whenman, a patent attorney from F.B. Rice & Co. The designs in question are 300328, 302124, 302125, 302126, 302127, 303986, and 303987, each with specific colour features. The main issue was whether these designs were distinctive over the cited prior art and anticipations.

The court had to decide if the designs were distinctive enough to warrant registration under the Designs Act 2003, considering the standard of an informed user. The designs in question had been cited against prior art, including other designs and trade marks. The applicant argued that the colour in the designs was a visual feature, and the court considered evidence from a previous case, Reckitt Benckiser Inc [2008] ADO 1 (2 January 2008). The court concluded that the colour in these designs was indeed a visual feature, and an amendment to the product name to include 'coloured' sufficiently indicated this.

The court assessed the distinctiveness of the designs by comparing them to the prior art, applying the standard of an informed user. For designs 300328, 303986, and 303987, the court found that the use of specific colours gave a distinctive overall impression compared to the cited prior art. Designs 302126 and 302127 also had distinctive features when compared to the cited prior art. However, designs 302124 and 302125 lacked distinctiveness over the cited trade marks, as the presence of blue in these designs was not considered distinctive enough by an informed user familiar with bluing agents.

The court decided that designs 300328, 302126, 302127, 303986, and 303987 were distinctive over the cited prior art, and their examination should be considered complete. Designs 302124 and 302125 were revoked as they lacked distinctiveness over the cited trade marks, unless an appeal was lodged within 28 days of the decision.

Orders