Somfy SAS

[2011] ADO 4

DESIGNS ACT 2003

STATEMENT OF REASONS FOR A DECISION OF A

DELEGATE OF THE REGISTRAR OF DESIGNS

Re:Design application 12675/2008 - LCD SCREEN FOR REMOTE CONTROL- in the name of Somfy SAS    .

Delegate:	T. E. Williams
Representation:	Applicant: written submissions by Pizzeys patent attorneys
Decision:	2011 ADO 4 S 39 and reg 4: Design is a product, and classifiable, thus able to be registered.

Background

1. Somfy SAS (“the applicant”) filed a design application and requested that the design be registered.  The design application, 12675/2008, is in respect of a design as follows:

2. The applicant has recently amended the application so as to identify the product to which the design is applied as “LCD screen for remote control”[1].  The Statement of Newness and Distinctiveness was also amended, and now reads:

   The newness and distinctiveness of the design resides in the features of pattern and/or ornamentation of the LCD screen.

   [1] Prior to that amendment the product was “a display screen”.

3. A design cannot be registered unless it meets the formalities check provided for by section 39 or 40 of the Designs Act 2003 (“the Act”). Prior to the recent amendments, to which I have referred in paragraph 2, the application was the subject of a number of formalities notices which asserted that the design did not meet the requirements of the Designs Regulations 2004 (“the regulations”) and thus could not be registered.  The applicant requested to be heard as to the registrability of the design and I was assigned to conduct the necessary hearing.  However, on the basis of the written submissions put to me by the applicant’s attorney, together with the amendment, I was satisfied that registration was appropriate and directed that the design be registered.  I set out now the reasons for that decision.

   Discussion

4. The formalities officer has contended that:

   (a)The product named in the application is an element of a product and not a product in its own right

   (b)A display on a display screen is not a product within the meaning of the Act and, accordingly, this application does not disclose any “product” that can be classified in accordance with the Locarno Agreement. The formalities officer conceded that Locarno does have a classification that would, aside from this aspect, cover “display screens”. The officer noted that the Locarno Agreement is not prescriptive of what type of product may be registered under the Act. He also said that “the visual features are not of the product, rather they are projected onto the product”.

   (c)This Office does not consider decisions of the United Kingdom relevant when interpreting the scope of the Act. This office relies on its own examination manual…

5. Dealing with those issues in order, (a) has been resolved because the amendment of the application makes it clear that an LCD display screen for a remote control does constitute a product. In terms of the definitions in s 5 of the Act, a remote control incorporating an LCD is a complex product. It can safely be assumed that any remote control that includes an LCD display screen must also include at least the following:

   • a minimum of one button, switch or other similar device
   • a casing, within which a battery holder may or may not be a separate part and
   • an integrated circuit or circuit board

   I am prepared to assume, since the contrary is unlikely, that an LCD screen is manufactured separately from the remaining parts.  Therefore, in terms of s 6(2) and despite being a component part, an LCD display screen is itself a product.

6. As to (b), a question of policy appears to have unduly complicated the formalities check. Section 39(2)(a) of the Act provides that if the design satisfies the formalities check specified in the regulations, registration “must” occur. Understandably, the formalities officer was concerned that the overall appearance of the product, ie, the overall appearance of the LCD screen, may not result from a visual feature of the product. However, that is not an issue within the scope of reg 4.04(c), which reads:

   (c) the design application identifies the product or products in relation to which the design is sought to be registered sufficiently to enable each product to be classified in accordance with the Locarno Agreement.

7. Reg 4.04 is thus something of an administrative “blunt instrument”.  It looks to:

   ·the existence of a product,

   • a Locarno classification for that product

   and nothing more.

8. The product is now to be described as an LCD screen for a remote control and the last formalities notice confirms that such a product is able to be classified. I appreciate the concerns which the formalities officer has expressed. Those issues may potentially require attention if examination of this design is requested in the future. However, the scheme of the Act reflects a deliberate policy decision with regard to what is sufficient at the pre-registration stage. The Act requires that such concerns as have been articulated here be left for the future. It is not appropriate that they be raised now when, prima facie, reg 4.04 is satisfied. 

9. As the Designs Examiners’ Manual of Practice and Procedure puts it, in Part 1 – Formalities, at 17.2 (my emphasis added):

   The purpose of the formalities check is to ensure that any design that is accompanied by a request for registration is also accompanied by enough information to allow it to be entered on the Register.

10. The formalities officer has relied on what is now the examination section of the manual, Part 2, at D09.1.1.  However, given what I have already said about an LCD screen as a product, and about Locarno classification, the formalities check is not the time to deal any further with the examinable aspects of this matter.  If the issue needs to be raised, an examiner will object in cases where a product is lacking.  That objection would be based on issues of newness and distinctiveness, an area that is quite clearly beyond the scope of the formalities check.   The manual states, at D09.1.1:

    Examination under s.65 is strictly limited to the issues of newness and distinctiveness (together with the grounds of s.43.) Any subject matter issues should have been dealt with as part of the formalities test (see Microsoft Corporation [2008] ADO 2), and should not normally arise in examination. Despite this, it is possible for a design being examined to lack subject matter. Most likely this will occur if the ‘design’ is in respect of visual features in the absence of a product. (An example would be a font.)

    The requirements of newness and distinctiveness (sections15 and 16) are properties of designs; they are not properties of alleged designs. In the event that the subject matter of a design under examination does not involve a product bearing visual features (see definition of design under s.5), it is incapable of satisfying the newness and distinctiveness requirements.

    In such circumstances, the examiner will object that the design is inherently not new, and not distinctive, because it is not a design in accordance with the Act – and set out the reasons why it is not considered to be a design.

    It might be that the owner will respond by asserting that the subject matter of the design can be classified in the Locarno classification, and therefore meets the requirements of the Act. However the ability to classify in Locarno does not constitute a test for whether the design involves a product bearing visual features. See Microsoft Corporation [2008] ADO 2 at para 15.

11. The manual thus recognises that issues relating to absence of product may arise post-registration and would then be dealt with in the examination forum. At examination, the manual envisages that such an issue would be put in terms of what the manual refers to as the lack of “a product bearing visual features”. However, the words “bearing visual features” are not part of the regulation that empowers the formalities check. Even within an examination context they are used simply as a convenient (if not necessarily precise) summary of the definition of “design” in s 5.

12. That is not to say that the formalities check is simply a rubber-stamp operation.  The manual refers to the Microsoft decision and thus shows that issues arising at the formalities check can be hard-fought.  However, the Microsoft decision also shows that, once a product is identified and can be classified, the formalities aspect is satisfied.  At paragraph 10 of that decision, the Hearing Officer noted that substantive issues as to the nature, rather than the existence, of the product do not fall for consideration at the formalities stage.  Then, at paragraph 13 (emphasis present in original):

    It follows that regulation 4.04(1)(c) requires the Registrar to identify the product in relation to which the design is sought to be registered – separate from visual features of that product  And then assess whether that product has been sufficiently identified for it to be classified in accordance with the Locarno classification.

13. Consistently, at paragraph 15, the Hearing Officer notes (my emphasis):

    In this regard, it is noteworthy that the Locarno classification has no express reference to fonts. But even if there was a specific reference to fonts in Locarno, that cannot displace the fact that when a design application sets out visual features in the absence of a product, there is no product to be classified in Locarno – and subparagraph (1)(c) of the formalities check necessarily fails.

    In other words, the focus of his decision was on the observable lack of a product, not on the presence or cause of any visual features of that (alleged) product.

14. Secondly, it seems to me that the formalities officer’s concerns may prove to be unfounded.  My view here is tentative, pending the further consideration of such issues in a disputed examination contested either between the owner and an examiner or between the owner and some interested third party).  This is not a case where the appearance of the screen is “projected onto” the screen:  the screen itself has an appearance.  It is true that the appearance of an LCD screen is not constant.  The appearance of such a screen may change depending on the mode in which the remote control of which it is a part is operating:  the screen may be blank, or it may show (for example) battery condition, or (among other possibilities) the features of visual appearance set out in the relevant representation.

15. As to the formalities officer’s contention (c), the applicant’s attorneys sought to flesh out discussion of the “changing appearance” question by noting a UK decision, Kabushiki Kaisha Suwa Seikosha's Design Application (1982) RPC 166. There, following the Ferrero (chocolate egg) case[2], the Designs Appeal Tribunal dealt with the current issue in relation to a digital watch display.  Such decisions are obviously not binding authority in Australia.  Depending on the scope of the decision, it may emerge that they are not persuasive, since the legislation in question is not the same: see, in particular, the discussion of “finished article”, a UK concept not present in the Australian legislation.  However, it is always useful to see how a tribunal in another jurisdiction discusses a relevant issue, albeit in the context of dissimilar legislation, and such decisions are never irrelevant.

    [2] [1978] RPC 473

16. I note the reference the formalities officer has made to the ALRC report.  Paragraphs 4.30 - 4.32 are a discussion of the “screen display” produced by computer programs.  All of the discussion in that part of the ALRC report is either explicitly or implicitly restricted to displays generated by a computer and displayed on a monitor or other computer hardware.  Significantly, a “screen display for a computer” is not the same thing as an “LCD display screen for a remote control”.  No doubt as technology changes other electronic items may arise and present new and more subtle challenges at the formalities stage but an LCD screen for a remote control, at the present state of technology, is not such a situation.

17. In any case, while recommendation 20 of the ALRC report is that (my emphasis) “screen displays should not be able to be protected as designs” the report also said that no special provision was needed to confirm that position. The new legislation was not drafted at the time of the report and I do not think that the terms of the report can therefore shed much light on such specific questions as the one with which I have dealt. I also note that a registration, in the regime that was subsequently established by the Act, is not “protection” so much as a precursor to protection. A design cannot be protected from infringement, if and when the owner intends to assert that rights exist, unless the registration also survives examination[3]. Thus, there are two ways in which the ALRC’s recommended outcome to which I have referred would be achieved. Quite obviously, if there is no product then the Act and regulations will prevent registration. But the outcome desired by the ALRC is also consistent with a regime where (as in this case) any issues beyond the findings necessary to register the design are left to the examination stage.

    [3] Section 73(3)

    T. E. Williams
    Hearing Officer
    Trade Marks Hearings
    31 May 2011