Reckitt Benckiser (UK) Limited - [2008] ADO 4

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS

Re:Designs 303921 and 303922 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 303921 and 303922 revoked

Background

I heard the owner on 14 May 2007 regarding designs 303921 and 303922, and objections raised during examination. The examiner had objected that each design lacked distinctiveness over the owner’s previous designs 300071 and 300095 respectively. In both instances the cited design was published in August 2004, before the priority date of the present designs (which is 4 March 2005).
Two representations of each design (perspective, and side view) together with a similar set of two representations from the corresponding cited design are shown in the appendices.
The product of the designs (and the citations) is specified as ‘Air freshener device’. The basic structure of the product is a shallow container that has the shape of a cross-section through a piece of fruit, with raised portions that are suggestive of the internal structure of the relevant fruit. In use, it would seem that the product is placed on a flat surface, with air circulation over the uncovered side of the container providing for the dissemination of air freshener in the environment.
The difference between the present designs and the cited designs lies in the incorporation of an annular region in center of the base of the device – such that when it is placed on a surface it rests on the annular region, rather than upon the whole base of the device.
The issue arising in the examination of these designs is – does the presence of this annular region result in the overall appearance of the design being distinctive over the respective citation?

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 annular region.

Informed user standard

S.19(4) of the Designs Act requires me to assess distinctiveness by applying the standard of an informed user. The applicant has not provided any evidence from informed users which might assist me in assessing that standard.
In my view, there are two broad categories of users of air freshener products. One category is those who are primarily interested in mechanical or functional issues – with issues of appearance being of secondary consideration. The other category of user is those who are primarily interested in attractiveness of appearance, with issues of mechanical construction being of secondary consideration. One might…

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 4
Case: [2008] ADO 4
Decision Date: 5 March 2008

CaseChat Overview and Summary

Reckitt Benckiser (UK) Limited, the applicant, sought to register two designs for an air freshener device, designated as Designs 303921 and 303922, through the Designs Act 2003. These designs were objected to during examination by the Deputy Registrar of Designs, Dave Herald, on the grounds of lack of distinctiveness over two previously registered designs, 300071 and 300095. The central issue before the court was whether the incorporation of an annular region in the base of the new designs sufficiently distinguished them from the cited designs, such that the new designs could be considered distinctive.

The court examined the issue by considering the standard of an informed user as required by section 19(4) of the Designs Act. The court recognised two categories of users for air freshener products: those primarily interested in mechanical or functional issues, and those primarily interested in the attractiveness of appearance. The court determined that the presence of the annular region, while providing a functional purpose, did not significantly alter the overall fruit-like appearance of the designs, which was the dominant feature. Thus, the court held that the annular region did not impact the overall impression of the design in comparison to the cited designs, regardless of the user’s primary interest in either functionality or appearance.

In light of the analysis, the Deputy Registrar of Designs revoked Designs 303921 and 303922, concluding that the designs lacked distinctiveness over the cited designs. The revocation was subject to the possibility of an appeal within 28 days of the decision date. No such appeal was indicated, leading to the final revocation of the designs.

Orders