Salvatore Ferragamo Italia SPA

[1999] ADO 4

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Design Application               :          No. 1332/98 in the name of SALVATORE FERRAGAMO ITALIA S.P.A.

Article:          A Set Of Perfume Bottles

Action:          Hearing under sub-regulation 17(1) in respect to examiner's objection to registration of a design.

Decision:          Issued  .

Abstract:The hearing concerned the issue of whether the perfume bottles represented in the design application constitute a set within the definition of a set of articles in sub-section 4(1) of the Designs Act. Under sub-sections 20(6) and 20(7) the outcome on this point would then determine whether the bottles can be included in the one design application or whether separate applications should be made in respect to each of the articles.

In considering the definition in sub-section 4(1) the bottles were found to be of the same general character and have a commonality of design. The point of contention was the sale or intended use of the bottles together.

The perfume bottles were found to be ordinarily on sale together but not intended to be used together. In any event, only one or the other of these alternatives needs to be met for the perfume bottles to overcome the point of contention. Since the bottles satisfy the criterion of ordinarily being on sale together, and the criteria of having the same general character and commonality of design, the bottles are a set of articles within the meaning of sub-section 4(1).

The design application is in order to proceed to registration.

DESIGNS ACT 1906

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

Re:Design Application No. 1332/98 by SALVATORE FERRAGAMO ITALIA S.P.A., and examiner's objection to registration of a design. 

BACKGROUND

Salvatore Ferragamo Italia S.p.A. ("Salvatore") applied to register a design on 11 May 1998.  The application claims priority from an Italian application.  The filing date of the Italian application is 20 November 1997. 

The design relates to a set of perfume bottles. The Designs Office has issued four adverse reports during examination of the application for registration. The office's objection to the application is that the articles shown in the application do not form a set of articles within the meaning of sub-section 4(1) of the Designs Act. Consequently the argument is whether separate applications for registration of a design should be made for each of the articles. On 23 September 1999 Salvatore requested a hearing in respect to the maintenance of the objection.

The hearing took place in Sydney on 22 October 1999.  Mr Lee Pippard, attorney of Spruson & Ferguson, represented Salvatore.  Mr Pippard was assisted by Mr Fidel Dela Paz of Spruson & Ferguson.  Mr Edward Genocchio and Mr Marcus Dalton, both also of Spruson & Ferguson, were present as observers.

THE DESIGN

Design application 1332/98 relates to a set of perfume bottles. 

The statement of monopoly states that monopoly is claimed in the shape and/or configuration of a set of perfume bottles as illustrated in the accompanying representations.

The representations as amended on 2 February 1999 show perspective, side, plan and inverse plan views of three perfume bottles.

The perspective views of the three bottles are depicted below.

APPLICABLE LAW

Sub-section 4(1) of the Designs Act provides definitions of terms. The sub-section defines a design and a set of articles in the following manner:

""design" means features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction;…...
"set of articles" means a number of articles that are of the same general character and ordinarily on sale, or intended to be used, together, being articles to each of which there is applied a design that is the same as, or that differs only in immaterial details or features commonly used in the relevant trade from, the design applied to the other articles or to any of them."

Sub-section 20(6) states that where the owner of a design wishes to register the design in respect of more than one article, the owner shall make a separate application for registration in respect of each article.  On the other hand sub-section 20(7) says that, for the purposes of sub-section (6), a set of articles shall be deemed to be one article.

The decision, Re Porcelain Products Pty Ltd ((1986) AIPC 90-331 at page 37,023), emphasises that an application to a set of articles must conform with all three criteria mentioned in the definition of a set of articles in sub-section 4(1). The decision restates the criteria in the following terms. A set of articles must comprise articles which-

1. are of the same general character,
   (ii)  are ordinarily on sale/intended to be used together, and
   (iii) have a commonality of design.

PRELIMINARY COMMENTS

The second Designs Office report acknowledges the application satisfies the first and third criteria.  I am also of the view the application satisfies these criteria.  Consequently the issue in dispute is whether the application satisfies the second criterion.  That is, whether the set of perfume bottles is ordinarily on sale or intended to be used together.

SUPPORTING MATERIAL

In response to the second report Salvatore filed material to suggest the set of perfume bottles are ordinarily on sale or intended to be used together.  This material comprises four attachments. 

The first three attachments are drawings, and extracts from magazines, showing three perfume bottles together.  The bottles shown in these attachments are "pour femme" bottles.  They are of different size.  The first two bottles appear to have the shape shown in figure 2.1 of the present design representations.  The third bottle appears to have the shape shown in figure 1.1 of the representations.  These attachments do not show any bottle having the shape of the third bottle shown in the representations, namely that of figure 3.1.

The fourth attachment illustrates a "pour femme" and a "pour homme" bottle being advertised together.  The shape of these two bottles appears to correspond with figure 2.1 and figure 3.1, respectively, of the representations.  There is no illustration of a bottle corresponding with figure 1.1 of the representations.

DECISION

Interpretation of sub-section 4(1)

Mr Pippard submitted the definition of a set of articles in sub-section 4(1) is not ambiguous or obscure. He cited section 15AB of the Acts Interpretation Act to consequently suggest the definition should be construed according to the ordinary or plain meaning conveyed by the text of the definition.

I need to clarify a few items of interpretation in respect to the definition in sub-section 4(1) of a set of articles. The first is whether the word, "together", in the phrase, "ordinarily on sale, or intended to be used, together," applies to both the sale and the use of the articles. On a plain reading of the definition, the whole passage defines a set of articles in terms of an association between articles. To give consistent meaning to the passage would require the word, "together" to apply to both sale and use. If this were not the case the association between the articles would be lost. I will treat the definition of a set of articles in sub-section 4(1) as rendering the word, "together", applicable to both, "ordinarily on sale" and "intended to be used".

Furthermore the definition uses the word, "or", between the phrases, "ordinarily on sale" and "intended to be used".  Mr Pippard submitted the word, "or", makes it explicit that the two phrases be read disjunctively. 

I accept that in the absence of ambiguity or obscurity, phrases should take their plain or ordinary meaning. The word, "or", clearly imports a choice of alternatives that need to be satisfied. On a plain reading of the definition in sub-section 4(1) the word, "or", means the second criterion requires only one of the two alternatives to be met. This interpretation has support from the decision, Re Sebel Furniture Limited, (1987) AIPC 90-450. In that case, four chairs were found as likely to be on sale together for purchase as a group. No decision was made on their intention of use together.

I will treat the phrase as reading, "ordinarily on sale together or intended to be used together".  Mr Pippard supported this interpretation.  Under the second criterion a design in respect to a set of articles need only satisfy the requirement that togetherness exists between the articles with either the sale or the use of the articles.  There is no requirement that both the sale and use of the articles have such association.

Whether the bottles are ordinarily on sale together

Mr Pippard noted the Porcelain (supra) decision states the expression, "ordinarily on sale together", means "the component articles of the set are normally displayed/offered for sale together as a group and are sought and purchased together as a group".  Consequently Mr Pippard suggested the Porcelain (supra) decision incorrectly joins together the explicitly disjunctive phrases, "ordinarily on sale or intended to be used together" that make up the second criterion in the definition of a set of articles.

It is inaccurate to say the Porcelain (supra) decision incorrectly joins explicitly disjunctive phrases together.  The seeking and purchasing of articles together as a group is not equivalent to considerations of their intention of use together.  Customers may seek and purchase some articles together as a group for use together.  On the other hand there may be many instances where customers purchase products together as a group without intending to use them together.  For instance the chairs in the Sebel (supra) case are produced by the one mould and thereby may be stacked together when stored.  The chairs differ through the presence or absence of upholstery and armrests.  Customers may purchase the chairs together as a group but may not necessarily intend to use them together.  The chairs may be used in different parts of premises or even in different premises by the same customer.

In the Porcelain (supra) case, the articles constituted a set of tableware comprising one mug, two jugs, three bowls and a condiment shaker.  While only five articles were found to have a commonality of design, all seven were regarded as likely to be ordinarily on sale together.  Jugs, bowls, a mug and a condiment shaker constitute a set of largely different articles.  In this context the Porcelain (supra) decision sets out the requirement that the component articles of the set be normally displayed/offered for sale together as a group and be sought and purchased together as a group.  That is, the Porcelain (supra) decision states that sale and purchasing considerations, of articles together as a group, need to be satisfied if articles are to be a set within the meaning of sub-section 4(1). The Designs Office examiner has followed this decision in maintaining objections to the present application.

The present circumstances differ from the Porcelain (supra) case.  In the present case the articles all are exactly the same.  Each is a perfume bottle.  The only variation between the articles is a varying width, length and height ratio. 

The set of different tableware articles is quite different from a set of equivalent perfume bottles.  For instance customers' purchasing patterns, and patterns of use would be different.  Aesthetic consistency appears to drive the desire to purchase or retain sets of different tableware articles together.  On the other hand it is not imperative that equivalent perfume bottles be purchased or retained together.  The desire to provide a choice of alternatives amongst similar products appears to drive the formation of sets of equivalent perfume bottles together at their point of sale. 

Consequently, in the context of equivalent bottles of perfume, it is inappropriate to require a purchasing criterion as part of the test of whether such articles are ordinarily on sale together.  In this case the Porcelain (supra) test requiring the seeking and purchasing of articles together as a group is too narrow an interpretation of the words, "ordinarily on sale together".  It is sufficient for the articles to comply with the requirement that the articles should be ordinarily displayed or offered for sale together as a group.

It is incorrect to suggest a variety of unrelated products lining the counter of a shop are ordinarily displayed or offered for sale together as a group.  Similarly a variety of motor vehicles in the same dealer's showroom are not ordinarily displayed or offered for sale together as a group.  There would need to be a practical association between the articles to qualify them as a group.  This would require the articles to inherently belong together at their point of sale irrespective of whether or not the articles are purchased together or used together. 

In the present case the attachments filed by Salvatore in response to the second report show a number of perfume bottles being associated together.  While the attachments are drawings, and extracts from magazines, I am satisfied a similar depiction or arrangement of the articles would be found at their point of sale. 

However the articles shown in the attachments are grouped in different arrangements compared to the set the subject of the present design application.  While three bottles may be shown in some attachments, two of the three bottles have exactly the same appearance and differ only in size.  Consequently only two of the three articles the subject of the application are shown in these attachments.  The attachments overall each show a different two of the three bottles of the design application.  That is, the attachments show the set of bottles, the subject of the application, being segregated and the bottles appear to be arbitrarily paired to suit appropriate circumstances.  Furthermore the bottles allegedly contain different products, two bottles being "pour femme" bottles while another is a "pour homme" bottle.  These circumstances may suggest it is not readily apparent that all three bottles are ordinarily on sale together.

Mr Pippard suggested the absence of a third article from the attachments does not mean the third article is not part of the set.  He also referred to the attachments that show "pour femme" and "pour homme" bottles being advertised together.  Mr Pippard submitted all the designs of application 1332/98 belong in the set and the corresponding articles would ordinarily be on sale together.

To qualify as a set that is ordinarily on sale together, the bottles need to have a practical association between them.  That is, the nature of the bottles should be such that they inherently belong together.  This suggests the contents of the bottles are irrelevant.  The issue is what is inherent in the nature of the bottles that makes the bottles ordinarily on sale together. 

The bottles convey the appearance of offering similar products in a range of sizes.  This presents customers with a choice of alternatives based on the amount of product needed and on slight changes in bottle design.  Customers would only get such choice if the bottles are seen together at their point of sale.  I am satisfied all three bottles have a practical association of inherently belonging together at their point of sale.

I conclude the three perfume bottles, the subject of the design application, are ordinarily on sale together.

Whether the bottles are intended to be used together

Mr Pippard submitted the words, "intended to be used together", mean the articles simply can be used in a single place or simultaneously.  He also suggested the words need to be interpreted liberally because manufacturers, retailers and traders have no control over how their products are used after they are sold.  Mr Pippard cited the example of a lounge suite comprising a 3-seater, a 2-seater and a single seater.  He said a person may purchase the whole set but use them in different parts of the home.  Consequently Mr Pippard said the issue is not how the articles are exactly used but whether it is intended they be used together.

To suggest the above quoted words require that the articles can be used in a single place or simultaneously is too broad a view of the words on their plain meaning.  I would expect at least that the articles are intended to be used in a single place or simultaneously.  The Porcelain (supra) decision holds a more prescriptive view.  That decision states the component articles must have some particular interaction, special relationship, complementary nature or necessary connection between each other. 

In the present case the "pour femme" bottles are in different sizes.  It is inconceivable to expect that users would intend to use, at the same time, a multitude of bottles of different sizes to access the same product.  Mr Pippard argued that users may have a multitude of perfume bottles of different size at home or in their possession at any one time with the same product in them.  However there is nothing inherent about the nature of perfume bottles to suggest that a plurality of bottles with the same product in them are intended to be used together in a single place or simultaneously.  Furthermore there is no requisite interaction or relationship between such bottles to suggest such intention of use.  The "pour femme" bottles are not intended to be used together.

The "pour femme" and "pour homme" bottles contain somewhat different products.  Clearly these bottles target different customers.  While the bottles may in some cases be packaged as a "his" and "her" product, one would expect the bottles when used will be separated from the package for use by different individuals.  These bottles are not intended to be used together in a single place or simultaneously.  Additionally there is no requisite interaction or relationship between these bottles to suggest an intention of use together.

In any case the contents of the bottles relate to their function rather than their design.  This suggests the contents are irrelevant in assessing the intention of use of the bottles.  The real issue is whether there is anything inherent in the nature of the design of the bottles to suggest the bottles are intended to be used together. 

A cutlery set comprising a knife, fork and spoon appears to be an example where the nature of the design of the articles clearly demonstrates their intention of use together.  On the other hand, in the present case, the articles are exactly the same.  Each article is a perfume bottle and is unrelated, in use, to any of the other bottles by any particular interaction or relationship.  Consequently there is no expectation of an intention of use together.  Furthermore the nature of the bottles' design does not suggest nor require an intention of using the bottles together as a set. 

Salvatore's attachments support the above views.  In the attachments the set of bottles, the subject of the design application, is segregated and the bottles appear to be arbitrarily paired to suit appropriate circumstances.

I conclude the three perfume bottles, the subject of the design application, are not intended to be used together.

CONCLUSION

I have found the perfume bottles shown in the representations are ordinarily on sale together. On the other hand the bottles are not intended to be used together. In any case, only one or the other of these alternatives needs to be met for the perfume bottles to satisfy the second criterion under sub-section 4(1). Since the bottles satisfy the criterion of ordinarily being on sale together, as well as the first and third criteria, the bottles are a set of articles within the meaning of sub-section 4(1).

Design application 1332/98 is in order to proceed to registration.

M G Kraefft
Delegate of the Registrar of Designs

Attorneys for the applicant  :  Spruson & Ferguson, Sydney.