Sportservice Pty Ltd

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Design 304230 in the name of Sportservice Pty Ltd, and examination.

Delegate: Dave Herald

Representation: Mr M Woods, of the applicant

Decision: Objection in examination. The citation was ambiguous in respect of one integer. While the representations accurately represented the product, an important element in the design appeared more prominent in the actual product than suggested by the representations alone. Not satisfied that a ground of revocation has been made out. Examination taken to have been completed.
Background

Design 304230 relates to a bicycle transport rack for attachment to the rear of a car. The basic structure is a vertical pole (typically rising about 1m in height), bent over at 90 degrees at the top to provide a horizontal section upon which bicycles are clamped. The innovation that has led to the design application was the ability to split the vertical section half-way up. This allows for separation of the top part, leading (inter alia) to more compact stowage of the rack (especially in the luggage compartment of a car), easier opening of the rear door of a car having a rear hatch door, and ability to orient the top part over the luggage compartment of a sedan car when supporting small children’s bicycles.
In fact, the material located by the examiner indicates a number of prior art products that allow for the rack to be split. But in these products the joint is effected by reducing the diameter of one part of the tube so that it fits inside the normal diameter of the other tube. In the present case the joint is effected by expanding the diameter of one part of the tube, so that the other (normal diameter) part of the tube fits inside. This gives rise to an expanded ‘collar’ section – a bit like the clitellum on an earth worm.
The following are the principal representations of the design.
During examination the examiner cited a number of bicycle racks, and asserted that the design was not distinctive over the prior art. In particular, the examiner argued that the only difference of any significance was the appearance of the connecting section – and that this feature would not affect the overall impression of the rack.
At the end of the 6-month period for completion of examination, the owner requested to be heard. The hearing was held in Melbourne on 17 Sep 2007. While the prosecution of the design was handled by a registered patent attorney, Mr Mike Woods (the author of the design) appeared in person.
Having heard Mr Woods, and considered the design and the citations, I have come to the view that examination of this design should be taken as completed. That is, the procedure under s.67 should now take place, leading to a certificate of examination issuing. However there are a number of issues of general significance in the circumstances of this case, and it is therefore appropriate that I briefly set out my reasons for decision.
Disclosure of the citation
One issue raised by Mr Woods was the nature of the rack disclosed in the citation. He indicated that he was familiar with products of the relevant manufacturer, and asserted that they were made using tubes of square cross-section. This issue was not raised in either of the detailed responses to the examination reports – which argued largely on the significance of the collar. While Mr Woods made this assertion at the hearing, he did not provide any evidentiary basis to support his assertion.
The significance of this issue is two-fold. Firstly, it is likely that a rack made of square section tubing will have a different visual appearance to one made of round cross section tubing – and this may have some impact on the overall impression of the product. Secondly, a square tube is less suited to having an expanded collar than a round section tube – and this may affect the assessment of the overall impression in the context of the standard of the informed user.
On close inspection of the image cited by the examiner, I had the impression that the vertical tube was likely to be of round cross-section [the horizontal portion connecting to the car is clearly square]. However the image is such that it can also be construed consistently with a square cross-section. And while the information available to the Registrar includes the manufacturer and their product code, I have been unable to find a better image of that product, or any other information to resolve this question. I am therefore in a position of uncertainty about the disclosure of the citation in this respect.
Representations, and overall impression
The primary argument during examination related to the overall impression of the product resulting from the presence of the collar. My initial impression of the design was that the collar is designed to be unobtrusive, with smooth curves and minimal size increase over the remainder of the tube. And the examiner, in maintaining the objection of lack of distinctiveness, clearly had the view that this collar would not have any substantial impact on the overall impression.
At the hearing Mr Woods produced a product said to embody the design. There are difficulties associated with viewing a product said to embody a design – in particular, whether the product actually embodies the design shown in the registered design. However, on viewing the assembled product I was somewhat surprised by the level of visibility of the collar. In particular, while the collar was not a dominant feature of the product, it was more apparent than I expected from the representations.
In dealing with this issue, it is important to recognize that a design is ‘the overall appearance of the product resulting from one or more visual features of the product’. – as per s.5 of the Act – and that the assessment of newness and distinctiveness required by s.19 is of the design. On the other hand a representation is ‘a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen’ – s.5. While a specimen might typically be a product embodying the relevant visual feature, drawings are not. A drawing is used to ‘represent’ the product and the visual features; it allows the design to be comprehended. Consequently it is important to recognise that the level of visibility of visual features in representations (considered as drawings) may be different (that is, either more or less visible) from the level of visibility in a real product bearing the visual features. And the assessment of distinctiveness must be conducted on the basis of the design (that is, products bearing the visual features) applying the standard of a person who is familiar with the product to which the design relates – not on the basis of a simple comparison of representations.
In the present case, the collar as shown in the representations looks quite inconspicuous. The collar as existing on a ‘real’ product was more conspicuous than the representations suggest. I have closely compared the representations with the actual product, and I’m satisfied that the representations do accurately represent the actual product.
I should add that while the collar was more visible in the actual product than I expected, it was not a dominant feature. And if the product had been painted matt black, it might have been unnoticeable.
Conclusion
Superficially, the present design appears to lack distinctiveness over the cited bicycle rack. However I cannot determine whether the cited rack is based on round or square tubing. And the collar section of the design appears more prominent in the actual product than in the representations (with those representations fairly representing the actual product) – such that it does have a noticeable impact on the overall impression of the product. In these circumstances I am not satisfied that a ground of revocation has been made out. Accordingly, and noting the amendment filed on 31 Aug 2006, I find that examination of this design has concluded. The procedures of s.67 now apply.
D Herald
Deputy Registrar
10 Oct 2007

Delegate:	Dave Herald
Representation:	Mr M Woods, of the applicant
Decision:	Objection in examination. The citation was ambiguous in respect of one integer. While the representations accurately represented the product, an important element in the design appeared more prominent in the actual product than suggested by the representations alone. Not satisfied that a ground of revocation has been made out. Examination taken to have been completed.

[2007] ADO 6

10 October 2007