Reckitt Benckiser (UK) Limited
[2008] ADO 5
•2 April 2008
DESIGNS ACT 2003
DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Designs 302155 and 302156 in the name of Reckitt Benckiser (UK) Limited, and examination.
Delegate: | Dave Herald |
Representation: | Applicant: P Whenman, Patent Attorney of F.B. Rice & Co |
Decision: | Designs 302155 and 302156 revoked |
Background
In the examination of designs 302155 and 302156, the examiner objected that each design lacked distinctiveness over the owner’s previous design 154950, and Australian trade marks 952206 and 952207.
An initial issue dealt with in examination was whether design 154950 was part of the prior art base. This design had an earlier priority date than the present designs, but was not published at the priority date of the present designs. The examiner’s objection was predicated on this design being part of the prior art base as defined in s.15(2)(c)(i). The attorney asserted it was not part of the prior art base – arguing that while it had an earlier priority date than the present designs, it was not a ‘design application’ as required by s.15(2)(c)(i). More specifically, the dictionary definition of ‘design application’ expressly refers to an application made under the 2003 Act, and there are no transitional provisions that have the effect of treating an application made under the Designs Act 1906 as an application under the 2003 Act for the purposes of s.15(2)(c)(i). Consequently the examiner withdrew the objection based on this earlier design, limiting the objections to the two prior published trade marks.
The examiner maintained her objections, and the owner requested a hearing, which occurred on 14 May 2007. The design application indicates that the product is a detergent capsule. At the hearing Mr Whenman indicated that the capsule was intended to be used in laundry machines, with the capsule consisting of a water-soluble skin enveloping the detergent. Typically the product would be sold in a box containing many capsules held randomly in the box. The representations of each design, together with the trade marks, are shown in the appendices. I have associated the most relevant trade mark with each design, although the examiner cited both trade marks against each design. The trade marks carry the following endorsement:
Mark description: {the mark} consists of the shape of the goods, being a transparent cushion with a transparent border, filled with BLUE gel with DARK BLUE speckles.
Statement of newness and distinctiveness
Both designs contain 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. In particular, the statement does not provide any basis to give particular attention to the skirt or any other part of the soap capsule.
Issues in dispute
In his written submissions for the hearing, the attorney stated:
“It is apparent from an impressionistic comparison that the subject designs possess a rectangular skirt which is clearly not evident in the cited trade marks, both of which appear to have irregular, discontinuous skirts. It is well known that notwithstanding that an irregular feature may be minor, a perhaps like feature which is regular will be immediately perceived as distinctive. The reason for this is that the eye is attracted to regularity and in this case symmetry and thus readily distinguishes a feature which is irregular and in the case of the cited trade marks, asymmetric.
In addition, the base of the design shown in both trade marks is quite obviously curved. The subject designs, however, have quite obviously flat bases.
Taking both the skirts and the bases into consideration, it is apparent that they are quite different. Given that the only similarity is the upper curved portion, it is submitted that even when greater weight is placed on this similarity, it cannot possible override the distinctiveness created by the skirt and base portions.
At the hearing I suggested to Mr Whenman that when the products of the design are packaged in a box, the skirts would quickly lose their flat appearance, and be crumpled like those shown on the trade marks. Hence (I suggested) that in use products according to the present designs would become indistinguishable from the cited trade marks. Mr Whenman did not provide me with anything that would demonstrate the incorrectness of this proposition.
Standard of the 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. In my view the relevant informed user is a person with domestic responsibilities for laundry, and is selective about the detergents to be used to achieve an effective wash.
In applying the informed user standard, an issue implicit in my suggestion at the hearing was that the material of the capsule would inevitably be flexible. However on subsequent consideration it is my understanding that the capsule of the design could be made of any number of materials. Significantly, while some materials might be highly pliant/flexible, others would be relatively rigid and/or resilient – and therefore my assertion about the impact of being located in a box is not an inevitable outcome.
More significantly, design protection is for the overall appearance of a product, not of its material of manufacture. Some products have a component of appearance that inherently depends on use (for example, an item of clothing such as a jumper ‘looks’ different depending on whether it is folded, hung on a clothes hanger, or worn). Other products are fundamentally static in appearance (for example, a hammer). In assessing a design, the informed user would recognize that features of variability that are inherent in the product are not per se visual features of the design, and duly discount the effects of such variability from the overall impression of the design. But for products that do not have an inherent variability of appearance, there is no basis for an informed user to assess the visual features on any basis other than in the form shown. In this regard I stated in Reckitt Benckiser Inc [2008] ADO 1:
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.
To this I would add that the informed user standard also is not a mechanism to incorporate speculation on how an otherwise invariable product might change in appearance as a result of use. At most, an informed user recognizing that a visual feature might change as a result of use might accord lower significance to that feature when assessing the overall appearance of the design. However any specific changed appearance is only part of the prior art base if that changed appearance has been separately published, or if there is evidence of use of the product in Australia in a manner that resulted in that changed appearance (see s.15(2)(a) - designs publicly used in Australia).
Consequently the informed user standard does not incorporate knowledge relating to how either the capsules of the design, or the capsules of the citations, might change appearance as a result of use. Rather the informed user standard is limited to being the basis for comparing the product and visual features of the design with products in the prior art as presented.
Consideration
In the submissions, primary focus is accorded to the skirt. In the trade marks, the skirt might be described as a crumpled depending skirt that may be rounded at the corners. In the designs, the skirt is similarly depending. The representations indicate some degree of undulation, but with the skirt not having significant rounding at the corners. It is also clear from the representations of both the designs, and the trade marks, that the crumpling is not an ordered or structured crumpling with a fixed pattern. Rather it has the appearance of random crumpling that arises when there is an excess of material. It therefore seems to me that any difference in the appearance of the skirt is merely one of degree – not one of significant difference in form or appearance.
Mr Whenman’s submissions refer to the presence of a flat bottom on the capsules of the design, whereas the bottom on the trade marks is somewhat rounded. As I understand the product, it provides a metered dose of laundry detergent to a washing machine. The capsules are intended to be supplied in some form of bulk container holding many such capsules, with the user removing capsules from the container and placing them in the washing machine. In such an arrangement, I would expect an informed user to be primarily interested in overall appearance, structural integrity, and ease of handling (with the latter issues being relevant only to the extent that they influence the assessment of the overall appearance). In this regard, I do not think that the difference between a flat bottom and a gently rounded bottom would have any significant impact on the overall appearance of the product. My conclusion might be different if there was some reason to believe that an informed user would have a particular interest in the presence of a flat region (for example, a desire to place such capsules on a flat surface together with an associated stability on that surface) thereby elevating the importance of a flat region when assessing the overall impression of the product (see, for example, Astra Zeneca AB [2007] ADO 4). However it is not reasonably apparent to me that an informed user has such an expectation with regard to this product, and I have no evidence from informed users that provides any basis to accord the flat region an increased prominence.
Design 302156 differs from 302155 by the presence of a circular region at the top of the capsule. The exact nature of this region is not specified. Close inspection of the representations indicates that this region might be more elevated than the surrounding area of the capsule – but the difference is slight. From the representations, this region would appear consistent with that portion of the capsule not containing any detergent. In this regard it is noteworthy that the cited trade mark (952206) shows a capsule that is not completely full – and in that sense the difference from the design is merely in the degree of fullness. In my view an informed user would consider both the design and the trade mark to relate to capsules that are not completely full – and would pay little attention to the precise degree of lack-of-fullness. That is, I do not think the differences in fullness between the trade mark and the design would, to an informed user, affect the overall impression of the product.
Decision
In overall impression, both the designs and the trade marks relate to encapsulated laundry detergent of similar macro appearance. That is, a somewhat rectangular body with the upper half being larger than the lower half, and a dependent skirt about one third of the way up the height of the capsule. While detailed comparison of the representations of the designs and the trade marks evince differences in detail, those differences are minor in the context of the overall appearance. With regard to the crumpling of the skirt, and the degree of fullness of the capsule, the differences are more matters of degree, such that they would not be considered significant to the informed user. Also the presence of the flat region on the bottom of the capsule is not conspicuous and there is nothing before me to indicate that an informed user would have particular interest in the presence of such a region (such that its presence would be more noticeable). For these reasons I am satisfied that design 302155 lacks distinctiveness having regard to trade mark 952207. I am also satisfied that design 302156 lacks distinctiveness having regard to trade mark 952206.
I am unable to foresee any amendment to the designs that would be capable of overcoming this 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 302155 and 302156.
D Herald
Deputy Registrar of Designs
2 April 2008
Appendix 1
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