Reckitt Benckiser (UK) Limited - [2008] ADO 5

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…

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.

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Details

AGLC: Reckitt Benckiser (UK) Limited [2008] ADO 5
Case: [2008] ADO 5
Decision Date: 2 April 2008

CaseChat Overview and Summary

The decision involved an examination of design applications 302155 and 302156 submitted by Reckitt Benckiser (UK) Limited, which were subsequently challenged on the grounds of lack of distinctiveness. The applicant, represented by P Whenman, contested the examiner’s objections that the designs lacked distinctiveness over the owner’s prior design 154950 and Australian trade marks 952206 and 952207. The primary legal issues revolved around the interpretation of distinctiveness in the context of design law, particularly under the Designs Act 2003, and whether the differences between the designs and the cited prior art were significant enough to confer distinctiveness.

The court examined the application of the standard of the informed user in assessing distinctiveness, emphasizing that this standard does not incorporate speculation on how products might change in appearance due to use or material properties. The court held that the designs, when compared to the cited trade marks, exhibited minor differences that did not significantly alter the overall impression of the designs. The differences in the skirts and the degree of fullness of the capsules were matters of degree rather than substantial differences in form or appearance. Moreover, the presence of a flat bottom on the designs did not impact the overall appearance significantly, as there was no evidence suggesting that informed users would place particular importance on this feature. Consequently, the court concluded that the designs lacked distinctiveness over the cited trade marks.

As a result, the Deputy Registrar of Designs, Dave Herald, decided to revoke designs 302155 and 302156. The decision noted that no amendment to the designs could overcome the identified lack of distinctiveness. The revocation would take effect unless an appeal was lodged within 28 days of the decision.

Orders