Reckitt Benckiser N.V
[2008] ADO 3
•5 March 2008
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 of examination, the owner requested to be heard; I heard the owner on 14 May 2007.
Designs 300328 and 300329 have a priority date of 11 Feb 2004, but were not published until 13 Dec 2004 (which was after the priority date of all the present designs.) Consequently Designs 300328 and 300329 form part of the prior art base under s.15(2)(c) for the present designs (apart from 300328).
Color
An issue I raised at the hearing was the nature of the colour used in the representations. In particular, whether the colour shown was intended to be a visual feature, or whether the colour was used as a drafting tool to differentiate between different parts of the tablet. The designs as filed and as registered made no express reference to colour being a visual feature.
The issue of the use of colour in representations was discussed in Reckitt Benckiser Inc [2008] ADO 1 (2 January 2008). In my view the colour as shown in the representations of the present designs is, on balance, consistent with the colour being a visual feature rather than used as a drafting tool.
The fact that colour is present as a visual feature may typically be best addressed in a design by way of a statement of newness and distinctiveness – as provided for under s.19. The statements on these designs do not mention colour. And as discussed in the above decision, the statement cannot be amended after registration. However the owner has since submitted an amendment to the product name of each of these designs (other than 302125), changing it from ‘Tablet’ to ‘Coloured Tablet’. In my view this is sufficient to remove any doubt that the colour as shown in the representations is a visual feature of the design. I am satisfied that the proposed amendments comply with s.66.
Informed user
Critical for the consideration of distinctiveness is the application of the standard of the informed user. In these proceedings the applicant has not provided any evidence from informed users. Nevertheless I am obligated to assess distinctiveness by applying the standard of an informed user.
The designs relate to ‘Tablets’, with the use specified as ‘for dishwashing purposes’. In my opinion, the type of soap tablet is most appropriate for domestic dishwashing machines – and accordingly the informed user is a person with domestic responsibility for dishwashing using a dishwashing machine. In assessing the standard of the informed user, I am of the view that the typical user of domestic dishwashing machines would also be familiar with domestic laundering, including the detergents used. Consequently in my view the informed user would have knowledge that bluing agents are frequently incorporated in laundry detergents for the purpose of making things appear whiter. [In this regard, I note that a simple internet search readily shows the use of bluing agents for perhaps 100 years or more – both by way of powdered detergents containing distributed particles of bluing agent, and by way of a solid bluing agent]. In my opinion such a person would readily have the view that if a bluing agent in laundering gives rise to cleaner-looking laundry, a similar outcome could be expected with respect to dishwashing. As a result, an informed user would not be surprised by the mere presence of some blue colouring in a detergent intended for a dishwasher.
Statement of newness and distinctiveness
Each of these designs contains a statement of newness and distinctiveness in the following terms:
Each feature of the design considered separately or in combination with any other feature or features.
This statement is identical to the statement I considered in Reckitt Benckiser Inc [2008] ADO 1 (2 January 2008). As I concluded in that decision, I interpret this statement as being a reference to the combination of all visual features of the design as shown in the representations.
Consideration – designs 300328, 303986 and 303987.
For these designs, the most relevant citations are design 300329, and Trade Mark 949959. Both citations show the product in grey scale. Neither citation has any indication of the colours used. From the evidence available to me I have no reason to believe that an informed user at the priority date would have an expectation of brightly coloured soap tablets with the particular pattern. In the absence of contrary evidence, I conclude that the overall impression arising from the use of the specific colours as shown in the representations of these three designs provides distinctiveness when compared to the non-specific colours shown in the two citations.
In addition design 300328 is cited against 303986 and 303987. In this case, the central spot of the citation is a prominent red, while that of the two designs is a prominent white. In my view that central spot is prominent in the overall impression of the product, and the difference between the white of the designs, and the red of the citation – when considered in the overall appearance of the product – is quite distinctive.
Accordingly I am satisfied, on the material available to me, that these three designs are distinctive over the prior art.
Consideration – designs 302126 and 302127.
For these designs, the most relevant citations are trade marks 792626 and 846593. Both citations show the product in greyscale, but the endorsement states (for each) that the lower part of the tablet is white, the upper part is blue and the sphere is red. Both designs include a lower layer that is a prominent yellow. In my opinion this region of yellow is of significant extent, and has a marked effect on the overall appearance of the product. There is nothing before me that leads me to believing that an informed user would have any expectation of there being a yellow layer in the product of these designs. I am satisfied, on the material available to me, that these two designs are distinctive over the prior art.
Consideration – designs 302124 and 302125.
The relevant citations for these designs are trade marks 792626 and 846593 respectively. In both instances, the body of the tablet has 3 layers (mottled blue, white, and blue), whereas the trade marks have two layers – mottled blue and white.
I am required to assess distinctiveness by applying the standard of an informed user. As previously noted, I consider the use of bluing agents in laundering would be well known by informed users. I am of the view that an informed user would not be surprised by the mere presence of blue in a soap tablet for a dishwasher. That is, the mere presence of a bluing agent in a dishwashing tablet could not, in my opinion, give rise to distinctiveness.
In these two designs, the blue involves something more than mere presence. It is present in two layers – a top mottled layer, and a bottom continuous layer. Both citations show the top layer as being mottled in appearance. [Although I also note that the top layer of these designs is little more than would be expected by the simple inclusion of particulate bluing agent in a soap tablet.] And while neither citation shows a bottom blue layer, the bottom layer is little more than what would be expected from the simple incorporation of a section of solid bluing agent in a soap tablet. Significantly, this is in distinction to the arrangement of the solid blue region in the tablet of designs 300328, 303986 and 303987, where the blue region involves a sense of ‘artificiality’ of construction, of artistic arrangement.
Trade marks 792626 and 846593 show all the features of designs 302124 and 302125 except for the presence of a blue bottom layer. I note that in opposition proceedings to trade mark 846593 a delegate of the Registrar of Trade Marks determined that the mark “is capable of distinguishing ‘automatic dishwashing products’”. And during the examination of trade mark 792626 the examiner stated ‘I agree that the combination of shape and colours confers on the trade mark some degree of distinctiveness’. However the considerations under the Trade Marks Act 1995 are quite different to those under the Designs Act 2003. In particular, distinctiveness under the Trade Marks Act serves a quite different purpose than under the Designs Act. In my view, the addition of a simple solid blue layer to a soap tablet does not provide distinctiveness (in the Designs Act sense) in the overall impression of the product when compared to the existing soap tablets that do not have such a layer – because an informed user with their knowledge of bluing agents would find the presence of a simple blue layer to be unremarkable.
For these reasons I am of the opinion that these two designs lack distinctiveness over trade marks 792626 and 846593 respectively.
Decision
I consider designs 300328, 302126, 302127, 303986 and 303987 are distinctive over the cited prior art. I am satisfied that the amendment to the product name proposed under s.66 (to refer to a ‘coloured’ tablet) is allowable under s.66. Accordingly I direct that examination of these six designs be taken as completed (on the basis of the proposed amendments) – with the provisions of s.67 now applying.
Designs 302124 and 302125 lack distinctiveness over trade marks 792626 and 846593. I am unable to foresee any amendment to the designs that would be capable of overcoming the ground of revocation. Accordingly, unless the registrar is served with a notice of appeal within 28 days of this decision, or if any such appeal is discontinued, I revoke designs 302124 and 302125.
D Herald
Deputy Registrar of Designs
5 March 2008
APPENDIX
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