Reckitt Benckiser (UK) Ltd - [2008] ADO 6

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS

Re:Designs 303049 in the name of Reckitt Benckiser Healthcare (UK) Limited, and examination.

Delegate:	Dave Herald
Representation:	Applicant: P Whenman, Patent Attorney of F.B. Rice & Co
Decision:	Design 303049 revoked

Background

The present design relates to “A tablet”. In the representations it is shown as a cylindrical product bearing flat faces, chamfered edges, and a greenish speckled coloring. The priority document (OHIM 203310) is essentially identical – except that the colour is blue, with blue and red speckling. Assuming priority properly derives from this application, the priority date of the present design is 15 July 2004.
In the examination of design 303049 the examiner objected that the design lacked distinctiveness on the following bases:

Australian design 93080, and UK designs 2081153 and 2103694
A variety of pills and tablets advertised on varying dates prior to the priority date.
A bottle of vitamin-C tablets that the examiner asserted had been in her possession before the priority date. These tablets were described as ‘in the colours of speckled yellow and speckled orange’.

The owner did not file a written response to the examination report but filed a request to be heard on the last day of the period for completion of examination. I heard the owner on 14 May 2007. Subsequent to the hearing I wrote to the attorney in the following terms:
At that hearing, the issues arose as to the basis for which the examiner assessed the standard of the informed user, and the extent to which tablets of the same or different colour, together with uniform mottling, were known.
As discussed, a primary mechanism for the examiner to assess the standard of the informed user is the impression they form when conducting the search. Also as discussed, I have requested the examiner conduct a further search with regard to the range of colours that are used for tablets. Please find attached hereto the results of that further search, together with the examiner’s comments. Please note that the results include material relevant to assessing the standard of the informed user, as well as citations.
Subsequently the attorney responded :

Requesting the product be amended to be:
“Pharmaceutical tablet having a colour and speckled appearance as shown in the representations”
Querying which of the various documents were citations, and which were there merely to indicate the informed user standard
Raised arguments on ‘freedom to innovate [s.19(2)(d)], based on the requirements of the Therapeutic Goods Administration – referring expressly to s.3(5) of the therapeutic Good Act 1989; and
Asserting that ‘having regard to the safe use of pharmaceutical tablets, the informed user must be a person who takes particular care in assessing and recognizing differences between such products’, and concluded ‘a pharmacist would seem to satisfy the requirements of an informed user.’

The examiner responded:

The following are to be considered as citations in addition to the material referred to in the first examination report:
oSeveral examples provided on…

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 (UK) Ltd

Details

AGLC: Reckitt Benckiser (UK) Ltd [2008] ADO 6
Case: [2008] ADO 6
Decision Date: 21 April 2008

CaseChat Overview and Summary

In the case of Reckitt Benckiser (UK) Ltd, the Deputy Registrar of Designs, Dave Herald, examined design 303049 in the name of Reckitt Benckiser Healthcare (UK) Limited. The design in question pertains to a cylindrical pharmaceutical tablet with flat faces, chamfered edges, and a greenish speckled coloring. The main legal issues that the court had to address were whether the design was distinctive enough to be protected under the Designs Act 2003 and whether there were any prior citations that could invalidate the design's distinctiveness.

The court first considered the legal basis for assessing the standard of the informed user, which is a crucial element in determining the distinctiveness of the design. The court also scrutinized the extent to which tablets of the same or different colors, along with uniform mottling, were known before the priority date. The applicant did not file a written response to the examination report but requested to be heard on the last day of the examination period. The applicant argued that the informed user should be someone who takes particular care in assessing and recognizing differences between such products, such as a pharmacist.

The court, however, concluded that the relevant informed user with respect to the design was a person who has familiarity with a significant range of pharmaceutical tablets, whether they are prescription tablets, non-prescription tablets, or illicit tablets. The court believed that distinctiveness would only arise where there are very clear differences in appearance. The court also noted that the freedom to innovate, as referred to in s.19(2)(d) of the Designs Act 2003, was not material to the assessment of the present design.

Upon examining the citations provided by the examiner, the court found that the design lacked distinctiveness over two of the cited ecstasy tablets, identified as ID: 981 and ID: 1147. The court concluded that the differences in color and speckling did not provide any element of distinctiveness in the overall impression. The court was unable to foresee any amendment to the design that would be capable of overcoming this ground of revocation.

In conclusion, the Deputy Registrar of Designs revoked design 303049, as the design did not meet the distinctiveness requirement under the Designs Act 2003. Unless the Registrar is served with a notice of appeal within 28 days of this decision, the revocation will become final.

Orders