Removerite Incorporated - [2013] ADO 7

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design Registration Nos. 335711 and 335712 in the name of Removerite Incorporated – and – examination thereof.

Delegate: Debrett Lyons

Representation: Owner : Andrew Cale of Fisher Adams Kelly, Patent & Trade Mark Attorneys

Decision: 2013 ADO 7
Sec. 63 examination: subject designs found to be distinctive over prior art base. Examination completed and registrations to be certified.
Background

On 10 February 2011, Removerite Incorporated (“the Owner”) filed an application for design registration of the Designs Act 2003 (“Act”), containing two designs, referred hereinafter as Design A and Design B (together, “the Designs”).
On 31 March 2011, Design A was registered as number 335711 and Design B as 335712 (“the Registrations”).
On 5 April, the Designs were the subject of a request for examination by the Owner.
Examination raised grounds for revocation of the Designs which were maintained through several official reports and in consequence of which the Owner asked to be heard.
The matter came before me, Debrett Lyons, a delegate of the Registrar of Designs for a hearing in Canberra on 6 May 2013. The Owner was represented by Mr Andrew Cale of Fisher Adams Kelly, Patent & Trade Mark Attorneys who attended the hearing via telephone.
Mr Cale made both written and oral submissions. As a result of discussion of the relevant issues at the hearing the Owner was allowed further time to produce evidence from an informed user. That evidence was not forthcoming and so this decision is based solely on the aforementioned submissions.
Examination and Prior Disclosure
Examination requires the Office to have regard to section 65(2)(a) of the Designs Act 2003 (“Act”) which creates a ground for revocation of a registration if the "design is not a registrable design".Section 15(1) states that a design is registrable if it is new and distinctive compared to the prior art base.
Relevant views of Design A and Design B are shown in Appendices A and B respectively.
Examination identified a ground for revocation based on prior art being an earlier US Design Patent No. D585,731 published 3 February 2009 belonging to the Owner (“the Prior Disclosure”) and shown in Appendix C. The Examiner alleged that the Designs are not new and distinctive because they are substantially similar in overall impression to the Prior Disclosure.
Legal framework and Submissions
Newness and distinctiveness are separate requirements. At the commencement of the hearing I made it plain to the Owner’s representative that if there were any ambiguities in what the Examiner might have said, I did not consider that the Designs were anything other than new.
The only live issue is distinctiveness and in that respect section 19 of the Act gives an initial instruction to the person making the decision to give more weight to similarities between the designs than to differences between them. Section 19(2) sets out the factors to be considered in assessing substantial similarity in overall impression, as follows:
19(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) …
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user)
In slightly redacted form, the Owner’s written submissions were:
Australian design registration 335711 is illustrated below with reference to FIGs. 1a and 1b, and Australian design registration 335712 is illustrated below with reference to FIGs. 2a and 2b.
The Registrant respectfully submits that distinctive features of the Registered Designs relate to the enlarged flanges and the taper of the shanks (i.e. curved lower surface of the flange).
The flanges of the Registered Designs are considerably thicker than flanges of the prior art. The thickness of the flange of the cited prior art represents only around 14% of the depth of the head, whereas the much thicker flange of the Registered Designs represents around 38% of the depth of the head. Additionally, the flange includes bevelled upper and lower edges, that are not present in the prior art.
Similarly, the tapered shank (i.e. curved lower surface extending from the underside of the flange to the shank of the screw) is also a significant visual feature of the head portion of the screw. The tapered shank occupies a similar proportion of the head portion of the screw to the thick flange and commensurate weight must also be attributed to the tapered shank.
The tapered shank is an important aspect of the design because it facilitates seating and engagement of the screw with the material into which it is being fastened and reduces the likelihood of breakage of the material during fastening. Therefore, the tapered shank is a significant visual feature of the design that informed users and customers alike would look for in identifying the screw to suit the task in hand.
… mere similarity is not sufficient – there must be substantial similarity between the Registered Designs and the prior art. Section 19 of the Designs Act includes several factors to be considered in assessing substantial similarity in overall impression. These include:
State of development of the prior art base for the design
The Registrant submits that the prior art comprises a lot of different shapes of screws and clearly, this is a mature technical field. The Examiner has acknowledged the large number of different shaped screws in the prior art in his Examination Reports.
Australian Law Reform Commission (ALRC) Report 74 - Designs considers the state of development of the prior art base. In particular, in para 5.23 it states:
"The extent to which a design is substantially different will depend on the state of development of the relevant prior art base. A more developed prior art base will mean that smaller differences will be sufficient to result in a finding that there is no substantial similarity."
Due to the very well developed prior art base with respect to the screws, the Registrant respectfully contends that smaller differences are sufficient to result in a finding that there is no substantial similarity.
Amount, quality and importance of that part in the context of the design as a whole
... the relevant impression is that gained by an informed user – and not that gained by an uninformed casual glance of the product. In that regard, the informed user may often have particular interests in certain aspects of a product, such that their attention is preferentially directed to those aspects. That is, the impression gained will necessarily depend upon the relative significance the informed user places on the various features.
In the case of the present application, the informed user will be familiar with screws and how they are used. Accordingly, the informed user will be aware that functionality of a screw is an important feature in determining the applicability of a screw to a particular task. Thus, the informed user will be drawn to functionality of the screws.
As considered in Icon Plastics Pty Ltd [2007] ADO 2, Astra Zeneca AB [2007] ADO 4 and Sportservice Pty Ltd [2007] ADO 6, if the informed user considers the feature where the difference occurs as a particularly important feature in forming the overall impression, that feature would thereby have an increased weighting which may outweigh the combined weighting of all the features in common.
In the case of Icon Plastics Pty Ltd [2007] ADO 2, an electrode plate cover edge strip was considered that - at a glance - had a similar overall appearance to strips of the prior art, as shown below.

FIG. 3a - Electrode plate cover FIG. 3b - Electrode plate cover
edge strip of AU 303361 edge strip of AU 305113
In paragraph 32, the delegate states the following:
"It is quite true that the registered design is a minor refinement of an existing one, such that, prima facie, revocation might seem appropriate. Further, the refinement is dictated solely by clear practical and functional principles. However, that alone is not fatal to the registration once it is also noted that this is a field where shape is limited and functionality is paramount."
The Registrant respectfully submits that screws are similar in that shape is limited and functionality is paramount. While the Registrant concedes that the present registration is a refinement of the design of US Design 585,731, as discussed above, even a minor refinement of a design is not fatal to registration.
Later in paragraph 32, the delegate states:
"A reasonably informed user, aware of the subtleties around the making of such cover strips, would immediately note the differing visual impact of the inner shape and react accordingly."
The Registrant respectfully submits that the informed user in the present case would be at least equally aware of the subtleties in screws, and would immediately note the differing visual impact of the flange and the taper of the shank of the present design compared to the prior art. Indeed, the increased thickness of the flange and the taper of the shank represent more significant departures from the cited prior art than the differences in Icon Plastics Pty Ltd [2007] ADO 2 discussed above.
In the case of Sportservice Pty Ltd [2007] ADO 6, a relatively small visual feature was found to have a noticeable impact on the overall impression of the product.
In particular, a collar of a connecting section (circled in FIG. 4 below), was found to have a noticeable impact on the overall impression of the product.
FIG. 4 - Bike rack of AU 304230
The delegate conceded that, superficially, the present design appears to lack distinctiveness over cited bicycle racks. However, while stating that the collar was not a dominant feature of the product, the delegate found that it did have a noticeable impact on the overall impression of the product and thus the design was distinctive over the prior art.
The Registrant respectfully submits that the same applies to the current registration. In particular, regardless of whether the flange and the taper of the shank are dominant features of the product, the Registrant respectfully submits that they do have a noticeable impact on the overall impression of the product.
In the case of Astra Zeneca AB [2007] ADO 4, a relatively small visual feature was assessed as having significant prominence to an informed user.
It was found that an indicator, referenced using an arrow in the below figure, resulted in a distinctive design as compared to the cited prior art.

Indicator

FIG. 5 - Inhalation device of AU 303092
In particular, it was found that relevant users would be drawn to this indicator based upon an expectation that the feature was useful, irrespective of whether or not the indicator would function.
The Registrant respectfully submits that relevant users in the present case would be drawn to the flange and the taper of the shank of the screw because these features have a clear and useful function to the operation of the screw. In particular, the relevant functionality is clear from the screws of the present registrations, rather than simply giving the informed user an expectation of such functionality. Moreover, the relevant informed users actively look for such features of screws to enable the users to determine whether the screws are fit for the intended purpose.
Freedom of the creator of the design to innovate
The concept of ‘freedom of the creator of the design to innovate’ derives from the 1991 EC Green Paper “The Legal Protection of Industrial Designs”. The paper recites:
5.5.8.3. The second provision endeavours to express a guide-line for the judge in order to cater for the extraordinary variety of cases that the design legislation is going to govern. The provision expresses the principle that, the more limited the freedom of the designer is in developing his design due to technical or marketing constraints (standardization, mechanical or physical constraints, necessity of taking into account deep-rooted marketing requirements by the clients, features imposed by fashion), the more weight has to be given to small differences or variations as constituting an independent development. The judge can expect the “relevant public” in this situation necessarily to give a more careful consideration to the details which make up the difference between two similar products.
5.5.8.4. On the other hand, where the freedom of the designer is unconstrained large and the design represents something substantially new and immediately perceived as such by the relevant public, designs representing quite a wide range of alterations or variations could be considered as infringing, because the strong personal character of the new design inevitably commands an overall impression of a substantial similarity, even if the differences are quite easily noticed.
In the present case, the designer is restricted in developing his design due to technical constraints relating to the technical operation of a screw. Therefore more weight has to be given to small differences or variations as constituting an independent development than if the freedom of the designer was unconstrained.
The Examiner suggests that most contentious is the issue of the amount, quality and importance of the features in similarity between the subject design and the cited design.
In particular, the Examiner contends that the newness of the elongated hexagonal head of the prior art requires that more importance be placed on it than with respect to other visual features.
The Registrant respectfully disagrees. The newness (or distinctiveness) of one feature, when considered alone, shall not preclude the presence of that feature in another later design. In particular, as discussed above, improvements can be made over an earlier design, and regard shall be given to the design as a whole.
Reasoning
The Owner acknowledged that the Designs are a refinement of the design of the Prior Disclosure.
In short, the Owner’s submissions are that (i) all screws are similar in that shape is limited and functionality is paramount (ii) the Designs carry functional visual features to which the informed user would pay regard, and (iii) having regard to the way in which those visual features differ from the features of the Prior Disclosure, the informed user would conclude that the compared designs are not substantially similar in overall impression.
The Owner has said nothing of the fact that the Registrations carry a so-called Statement of Newness and Distinctiveness (“SOND”). In each case the SOND reads:
The newness and distinctiveness of the design resides in the shape and/or configuration of the SCREW WITH ELONGATE HEAD shown in the representations. When assessing the newness and distinctiveness of the design, the shaft area of the screw shown in broken lines is to be disregarded.
I have recently considered in some detail the combined effect of section 19, a SOND and use of broken lines in the matter of Re: Design Registration No. 339334 in the name of Invacare Corporation and examination thereof [2013] ADO 4 (unpublished) where it was said at paras 17-23:
The use of broken lines, dashed lines, coloured rinse, and other similar practices are not legally controlled or legislated for.   Instead, they are conventions which have been adopted across jurisdictions and over a long period of time, arching in many cases over the passage of successive design laws.
IP Australia’s Designs Examiners' Manual of Practice and Procedure (“the Manual”), for example, states at D04.5
Dashed v solid lines
A common situation involves some elements of the representations being shown in solid lines, while other elements are in broken (dashed or dotted) lines. Broken lines are frequently used to indicate things such as:
·   elements of the product other than those bearing the visual features of the design;
·   boundaries (e.g. of a pattern applied to part of a surface);
·   stitching;
·   perforations;
·   hidden elements (typically in perspective views);
·   features that establish an environmental context;
·   features outside the scope of the design …
The Manual goes on at D04.5 to state:
In all instances, the examiner needs to interpret the representations in the context of the design as a whole, applying a presumption that differences in the manner of representation of features is for a purpose, and make this assessment in the context of the standard of an informed user.
Interpretation of the representations in the context of the Design as a whole in turn requires consideration of any written statements about the way the Design is to be understood. The Designs Act 2003 (“the Act”) introduced the so-called “statement of newness and distinctiveness” as an optional element of the design application. Section 19(2) of the Act requires the decision maker to have particular regard to those features included in a statement which identify particular visual features of the design as new and distinctive.
The SOND may be drafted in various ways. So, in this case for example, the SOND states that newness and distinctiveness reside in the features of the Design shown in solid lines in the representations excluding those features shown in broken lines (added emphasis).
The Manual goes on at D04.6 to explain that section 19(2)(b) of the Act has its origin in recommendation 50 of the Australian Law Reform Commission, Designs, Report No 74 (1995) which stated at [6.21]:
Where a visual feature that is claimed to be new and distinctive relates to only part of the product, the court should pay particular attention to that part of the product but only in the context of the whole of the product. The ALRC gave the following example:
… if a cup is designed with a new and distinctive handle, the design owner will be able to register the design of the cup and identify the handle as the new and distinctive feature for which protection is sought. If a competitor takes the handle and places it on a differently shaped cup, the court will be directed to consider when determining whether the exclusive right has been infringed whether the design of the new cup is substantially similar in overall impression to the design of the old cup, paying particular attention to the designs of the handles in each case but not disregarding other parts of the cup. The design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.
The Manual expresses it thus:
“to understand the effect of a Statement of Newness and Distinctiveness, it is important to understand that a statement does not derogate from the need to assess distinctiveness of the design in the context of the overall impression of the product bearing the design. For example, if a visual feature is insignificant in the overall impression of the product bearing the design, specifying that feature in a statement does not alter that fact … Where the statement identifies features that relate to only part of the design, distinctiveness is assessed having particular regard to those features – albeit in the context of the design as a whole [s.19(2)(b)(ii)]. In this situation, the statement functions to distinguish between the visual features of the design, and features that are generic to the product. That is, such a statement may result in the design being of broader scope than might otherwise be the case.

In the cases before me now, the SOND has a similar impact on the overall assessment of the Designs. In particular, the informed user, being a person who is familiar with the product to which the Designs relate, or with similar products, must pay particular attention to the visual features described in the SOND, namely, those features of shape and/or configuration of the screws, paying particular attention to the areas shown in solid line. In each case this area is the entire head of the screw beginning from the point that the shaft starts to taper out to the flange. Since those features relate to only part of the Designs, the informed user must have particular regard to that part of the design in the context of the Designs as wholes.
I am drawn to a number of related submissions made by the Owner. First, that “the informed user will be familiar with screws and how they are used. Accordingly, the informed user will be aware that functionality of a screw is an important feature in determining the applicability of a screw to a particular task. Thus, the informed user will be drawn to functionality of the screws.”
Secondly, that “the tapered shank is an important aspect of the design because it facilitates seating and engagement of the screw with the material into which it is being fastened and reduces the likelihood of breakage of the material during fastening. Therefore, the tapered shank is a significant visual feature of the design that informed users and customers alike would look for in identifying the screw to suit the task in hand.”
Finally, that “the informed user in the present case would be at least equally aware of the subtleties in screws, and would immediately note the differing visual impact of the flange and the taper of the shank of the present design compared to the prior art.”
As indicated already, there is no evidence from an informed user. Moreover, the Owner’s submissions did not identify an informed user. Accordingly, I have no direct evidence of any of those claims and so might easily consider them to be merely speculative.
Nonetheless there is a level at which they carry weight from a purely common sense standpoint. It is axiomatic that an informed user will be familiar with screws and how they are used. I could not take issue with that.
There are a number of classes of people who could be considered informed users of this type of product. One would be builders. For obvious reasons I also accept the submission that an informed user, such as a builder, would be drawn to the functionality of the screw in determining the applicability of the screw to a particular task.
I then require an act of faith to accept the submission that the tapered shank is an important aspect of the Designs because it facilitates seating and engagement of the screw with the material into which it is being fastened and reduces the likelihood of breakage of the material during fastening. Nevertheless I can apply my own general knowledge of such devices and at least understand the reason why a tapered shank might facilitate seating and can, perhaps to some lesser degree, appreciate the claim that a tapered shank might reduce the chance of the head sheering from the shank of a misaligned screw. Certainly, I think a person such as a builder would have those appreciations.
The Owner reasons that the tapered shank is therefore a significant visual feature of the Designs that informed users (and customers alike) would identify. I am then asked to draw the conclusion that an informed user would “immediately note” the differing visual impact of the flange and the taper of the shank of the Designs from that of the design of the Prior Disclosure.
Ignoring the misplaced reference to customers and applying the standard of an informed user - say, a builder – the final task is that I examine whether or not it is a reasonable conclusion that attention would be paid to the visual features of the enlarged flange and the tapered shank.
In turn, that requires me to look more closely at the Owner’s remaining submissions. I must also revisit my earlier observation that a complete reading of section 19 requires me to pay some attention to the whole of the Designs, no matter what the SOND stipulates.
The Owner submits that the prior art for screws is a mature and crowded technical field. The Owner has not provided direct evidence of that matter but I note that it is an admission by the Examiner and, so far as it weighs on my findings, I accept that this is likely to be true.
The Owner correctly states the law to be that a more developed prior art base will generally mean that smaller differences will be sufficient to result in a finding of distinctiveness.
The Owner points to the facts that the flange of the Designs is considerably thicker than the flange of the Prior Disclosure and that the flange includes a beveled leading edge absent from the Prior Disclosure.
The Owner relies on certain statements made in decisions from this Office (Icon Plastics Pty Ltd [2007] ADO 2, Astra Zeneca AB [2007] ADO 4 and Sportservice Pty Ltd [2007] ADO 6) for the proposition that if the informed user considers the feature where the difference lies as a particularly important feature in forming the overall impression, that feature would thereby have an increased weight which may outweigh the influence of other common features.
I have no issue with that proposition, nor with the statement that Astra Zeneca AB is good authority for a finding that if an informed user has an expectation that a feature is functional, that is enough to draw the informed user’s attention, and therefore raise the feature’s importance.
Once more the Owner correctly recites the law to be that the more limited the freedom of the designer is in developing his design due to, for example, mechanical or physical constraints, the more weight has to be given to smaller differences.
On balance, I have come to the finding that the Designs are not substantially similar in overall impression to the Prior Disclosure.
In reaching that conclusion I have given more weight to similarities between the designs than to differences between them. I have paid regard to the fact that, in purely quantitative terms, the greater part of the Designs are “substantially similar to another design, have regard to the amount ... of that part in the context of the design as a whole”.
I have paid regard to the fact that the SOND in combination with section 19 requires me to have less regard to the shank of the screws and focus attention on the remainder of the screws.
I have balanced those factors with the functional aspects of the Designs and concluded that, in qualitative terms, the distinctive features of the Designs differ from the Prior Disclosure and I have concluded that an informed user would have regard to the importance of those features in the context of the Designs as wholes.
Decision
I am not satisfied that a ground of revocation has been made out in respect of either of the Designs. I direct that Registration Nos. 335711 and 335712 be certified in accordance with section 68.

Debrett Lyons
Hearing Officer
Designs Hearings
4 October 2013
Appendix A
Design A: AU Registered Design 335711
Appendix B
Design B: AU Registered Design 335712
Appendix C
The Prior Disclosure: US Design Patent D585,731

Delegate:	Debrett Lyons
Representation:	Owner : Andrew Cale of Fisher Adams Kelly, Patent & Trade Mark Attorneys
Decision:	2013 ADO 7 Sec. 63 examination: subject designs found to be distinctive over prior art base. Examination completed and registrations to be certified.