Reckitt Benckiser (UK) Ltd
[2008] ADO 6
•21 April 2008
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 To limit the number of instances, I make particular note of : IDs 981, 982, 1012, 1013, 1014 and 1147;
oThe pair of yellow tablets provided on
oThe Hydromorphone HCl tablet provided on that the informed user was limited to pharmacists, asserting that the primary informed user is the consumer of the tablets. The examiner also noted that ‘it is not merely their ability to differentiate between the appearances of tablets and ability to clearly identify them that is to be commented on, but their regard of distinctiveness (or lack of) of the design applied to the product.”
The attorney responded on 9 Nov 2007, identifying various differences said to be material. This decision follows from this response.
In the course of these proceedings, the examiner has identified a range of citations. Many of these citations are relevant for similar reasons. I have reproduced the primary citations in Appendix 2 (being ecstasy tablets) – on the understanding that if the design is new and distinctive over these citations, they will also be new and distinctive over any other citation raised by the examiner.
Amendment
The owner has requested amendment to the product name, as identified above. The examiner did not raise any objections to the allowability of that amendment. I am of the view that the amendment is an allowable amendment under s.66. Accordingly this decision is based on the design as proposed to be amended.
Statement of newness and distinctiveness
The design 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.
One of the issues of distinction that the attorneys has raised in submissions is that the present design does not include any imprinted marking on a face of the tablet – in distinction to many of the cited ecstasy tablets. I particularly note here that in circumstances where the distinctiveness of a design is alleged to involve the absence of a visual feature, a statement of newness and distinctiveness might reasonably make that fact clear. But there is no such assertion in the current statement of newness and distinctiveness, and there is nothing else in the documents associated with the design application to indicate that a visual feature is the absence of imprinted markings on the face of the tablet.
Colour, and priority date
As I previously noted, the representations of the current design show the product in a shade of green. From the way in which the colour is used in the representations, it is clear that the colour is intended to be a visual feature of this design; I do not think there is any basis to argue that the colour is used merely as a drafting tool. A similar situation arises with regard to the priority document – which shows the tablet in a blue colour.
In preparing this decision, I experienced some difficulty in printing the electronic scanned versions of the representations of the present design in a colour which was consistent with the original representations as filed. From this I have formed the conclusion that while the priority application shows the tablet in blue, that might be as a result of the printer used at OHIM to prepare the priority document. Equivalently, it might be that the green as shown on the present representations might not be the colour intended by the owner when filing – although I have nothing to suggest this is the case, and there is nothing in the design application that describes the colour. At the hearing I raised the question of the colour as shown in the priority document – but there has been no clarification of why the colours are different.
Importantly, the design is dictated by the representations as filed – which are essentially green. If it was necessary to establish whether the design is entitled to the asserted convention priority, the fact that the certified copy of the priority document shows the tablet to be blue presents a serious difficulty for the owner. However as all of the citations relied on by the examiner were published before the earliest possible priority date of the design, and the validity of a claim to convention priority is not per se a ground of revocation, I do not need to consider the matter further.
Freedom to innovate
The attorney submitted that because of the regulatory constraints imposed under section 3(5) of the Therapeutic Goods Act 1989 [the TGA Act], the designer of pharmaceutical tablets is considerably constrained in innovation – and that therefore greater weight must be placed on albeit relatively small differences in assessing distinctiveness. This argument relies on the concept of Freedom to Innovate, as referred to in s.19(2)(d) of the Designs Act 2003.
I discussed the background to the concept of Freedom to Innovate in Apple Computer Inc [2007] ADO 5 (20 September 2007), where I stated:
19. The attorney has raised the issue of freedom to innovate as set out in s.19(2)(d). The concept of freedom to innovate derives from the 1991 EC Green Paper entitled The Legal Protection of Industrial Designs – see paras 5.5.8.3 and .4 of that paper, and para 5.25 of ALRC Report No 74. One facet relates to the situation where a design relates to something particularly new, and the need to interpret the scope of such designs broadly. The other aspect, of relevance to the present situation, is recognition that where the design of a product includes elements that are dictated by reason of regulatory or market constraints, the informed user will be aware of that fact, discount the significance of such features to the distinctiveness of the design, and will give greater weight to features that otherwise are not particularly pronounced in the appearance of the product. That is, when a user expects a product to have certain visual features, the user’s perception of the overall appearance of the product will be significantly affected by the contribution of ‘lesser’ features.
In the present case, there is little doubt that the TGA Act regulates many aspects of the supply of pharmaceutical products (although clearly it does not regulate the illicit products of the citations). However the attorney has not identified any visual feature of the present design that is mandated or restricted by the TGA Act such that its significance in the design or the citations should be discounted when assessing the overall impression. Accordingly I do not believe the concept of freedom to innovate is material to the assessment of the present design.
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.
The attorney has sought to identify the informed user with a pharmacist, being a person concerned to supply the correct medication. The examiner has argued that while she accepts that a pharmacist is an informed user, the primary informed user is the consumer of the tablets. The examiner also noted that ‘it is not merely their ability to differentiate between the appearances of tablets and ability to clearly identify them that is to be commented on, but their regard of the distinctiveness (or lack of) of the design applied to the product.’
In my opinion a pharmacist is clearly familiar with a wide range of pharmaceutical tablets, and therefore qualifies as being ‘informed’. One might also expect that a pharmacist may have some familiarity with illicit pharmaceutical tablets such as ecstasy tablets (although obviously not by way of dispensing them).
I agree that a consumer is a ‘user’, that doesn’t necessarily mean the consumer is an informed user. For example, a person who has only ever taken non-prescription medication for headaches does not thereby have familiarity with pharmaceutical tablets in some general sense.
In my view, the relevant informed user with respect to the present design is a person who has familiarity with a significant range of pharmaceutical tablets – whether they are prescription tablets, non-prescription tablets, or illicit tablets. That is, I would expect that an informed user would have an appreciation of the range of appearances of pharmaceutical tablets, including size, shape, coloring, markings and indentations – without necessarily having comprehensive knowledge about all possibilities, and without being constrained to those pharmaceuticals that might only be bought from a pharmacist.
The attorney submitted (letter of 13 August 2007) 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 products.’. It seems to me that the concern of an informed user to ensure someone did not take an incorrect tablet is relevant to assessing the standard to be applied – particular with regard to the amount, quality and importance of visual features. In my view, the fact that ingestion of an incorrect tablet can lead to life-threatening situations implies that an informed user reliant upon the appearance of a tablet to select the correct tablet will necessarily expect there to be a very clear differentiation in the visual appearance of tablets. Failing that, the informed user would (in my opinion) select tablets for administration primarily on the basis of other criteria (such as the labeling on the packaging they are contained in) with the overall appearance of the tablet being of minimal significance. That is, the informed user standard as applied to pharmaceutical tablets would suggest that distinctiveness will only arise where there are very clear differences in appearance.
The citations
The primary citations are ecstasy tablets. Simple investigation of the substance (such as an internet search) indicates the active ingredient is a psycho stimulant and mild hallucinogen; and that ecstasy has apparently been considered as an appetite suppressant, and used in psycho analysis in the years before its use was restricted. That is, whatever the current availability and legality of ecstasy tablets, I am satisfied that the ecstasy tablets as cited are a ‘pharmaceutical tablet’ consistent with the product identification of the present design. [I note that the attorney has not argued a contrary position.]
The citations were found by way of an internet search. Evidence of the publication dates is by way of entries in the ‘wayback machine’ – – with the dates ranging between 6 October 2003 and 25 May 2004. While there can be issues about the reliability of the publication dates established from this tool, it nevertheless provides rebuttable evidence (rather than proof) of the publication date of the citations. The owner has not asserted that publication of these citations only occurred after the priority date, or otherwise disputed the publication date evinced from the wayback machine. Accordingly I am reasonably satisfied that the citations were published before the priority date, which is no earlier than 15 July 2004.
Consideration - ecstasy tablet ID:981
The attorney in his response dated 9 Nov 2007 stated: “Different colour, not speckled. Similar 3-dimensional appearance”. In my view, the overall shape of the tablet appears to be the same – as conceded by the attorney. The attorney asserts that the tablet is not speckled; while the image does indicate a spot, and has some indication of possible faint speckling, I would agree that the speckling of the present design is more pronounced than any speckling that might be present in the citation. Nevertheless, the speckling in the present design is not very pronounced, the more so as the image of the representations is scaled down to the size expected of a pharmaceutical tablet (approximately 5 to 10 mm in diameter, perhaps occasionally a little larger.) Importantly, for a person intent on avoiding incorrect dispensing of tablets, in my view the speckling on the present design, as considered on a ‘real’ pharmaceutical tablet, lacks any significant prominence that might otherwise enable the informed user to be satisfied as to which is the ‘correct’ tablet. That is, to the informed user the speckling of the present design does not provide distinctiveness from the citation.
The attorney also asserts that the design is of a different colour. I would agree that the representations present the tablet with a shade of green that is not identical to that of the citation – the representations have a slight bluish tinge, whereas the citation has a slight yellowish tinge[1]. However the colour difference is slight. Importantly, an informed user intent on avoiding incorrect dispensing of tablets would (in my view) proceed on the basis that there is insufficient difference in colour to be satisfied as to which is the ‘correct’ tablet. That is, however the colour difference is technically described, to the informed user that colour difference would not provide distinctiveness.
[1] Note that if the design representation and citation as shown in the Appendices are printed, the colours may differ from the original images – dependant upon the colour printer quality and settings.
In conclusion, applying the informed user standard I do not consider that the differences in colour and speckling provide any element of distinctiveness in overall impression. Rather an informed user would necessarily rely on information other than the appearance to determine the correct tablet to administer.
Consideration - ecstasy tablet ID:1147
The attorney in his response dated 9 Nov 2007 stated: “Embossed on at least one face with a duck design. Similar 3-dimensional appearance and colour”. I understand this to be a concession by the attorney that the shape and colouration (including the speckling) is effectively the same – and certainly not involving any element of distinctiveness.
The key issue is that the citation includes an embossed duck on one face, whereas the representations of the present design have no such embossing. I discussed the issue of a citation having additional visual features in Reckitt Benckiser Inc [2008] ADO 1 (2 January 2008), where I stated:
40. In my view the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.
In my view, this situation applies in the present case. All the features of the present design are admittedly present in this citation. Furthermore, an informed user would have awareness that pharmaceutical tablets frequently contain indentations on one or both faces – such as a line for cutting a tablet in half, dosage indications, or the range of markings that are apparently present on tablets like the cited ecstasy tablets. Consequently, in the absence of anything in the present design to indicate that the design is to the exclusion of, or incompatible with the presence of, additional visual features on the face of the tablet (in particular, indentations), the informed user would readily conclude that the present design is present in the tablet of the citation – and therefore is not distinctive over that citation.
Conclusion
In my view the present design lacks distinctiveness over two of the cited ecstasy tablets, identified as ID: 981 and ID: 1147. I have not given detailed consideration to the other citations raised by the examiner, as they are less relevant than these two citations. I am unable to foresee any amendment to the design 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 design 303049.
D Herald
Deputy Registrar of Designs
21 April 2008
Appendix 1: the Design representations
Representations of the design
Appendix 2 : the Citations
Ecstasy tablets – from
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