White Motor Corporation (Australia) Pty Ltd v McConnell Seats Australia Pty Ltd

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Examination of design number 201314797 (registration number 352779) in the name of McConnell Seats Australia Pty Ltd and request for examination by White Motor Corporation (Australia) Pty Ltd

Delegate: Debrett Lyons

Representation:
Requestor: Fidel Dela Paz of protectmyidea.com.au

Owner: Byron Bowman of Griffith Hack

Decision:
2018 ADO 1

Examination requested under subsection 63(1) by person other than the owner or the Registrar; Design new and distinctive; Design to be certified.

Background

McConnell Seats Australia Pty Ltd (‘McConnell’) is the current owner of design number 201314797 (‘the Design’) filed under the Designs Act 2003 (Cth) (‘the Act’) on 23 September 2013 (‘the Priority Date’), registered on 9 December 2013, allocated registration number 352779, and entered on to the Register of Designs.
The Design product is described as a “Seat for a passenger vehicle”, representations of which taken from the Register of Designs are shown below.
On 3 July 2015 McConnell made a request for examination of the Design. The Design was duly examined by this Office and on 10 August 2015 the Design was certified and advertised as such in the Australian Official Journal of Designs on 13 August 2015.
On 30 September 2015 a request for examination of the Design (‘re-examination’) was made by a third party, White Motor Corporation (Australia) Pty Ltd (‘White’). The re-examination request was supported by a Declaration of Neil Bamford, CEO of White, made on 29 September 2015 (‘Bamford’) together with other documents referred to later (‘the section 69 material’).
McConnell was then provided with a copy of the section 69 material and invited to pay the owner’s portion of the examination fee in accordance with reg. 11.05 of the Designs Regulations 2004 (Cth). Upon payment of this fee the Design was re-examined and 10 February 2016 a ‘Notification of Intention to Certify’ was sent to both parties. The notification indicated that the examiner was satisfied that no ground for revocation had been made out upon re-examination.
On 10 March 2016 White asked to be heard on the matter of the re-examination. On 19 April 2016 a ‘Direction Notice” was sent to the parties wherein both were given an opportunity to file evidence in support, but only the McDonnell opted to do so. That evidence comprised the Statutory Declaration of James Lowe, General Manager of McConnell, made on 16 June 2016 (‘Lowe’).
White was given the opportunity to file evidence in answer no later than 6 September 2016 but did not do so. At that point the Office considered the evidence stages complete and gave until 10 October 2016 for the parties to indicate how they wished to be heard. McConnell advised the Office that they would attend a hearing if White asked to be heard in person. White had no reaction. A hearing date was set down for 18 October 2017 and I was appointed to take the hearing in my capacity as a delegate of the Registrar of Designs.
For the reasons which follow the hearing was vacated and the parties notified that this decision would follow based on the evidence of record.
Legal framework
Section 65(1) requires the Registrar to consider whether there is a ground for revoking registration of the Design.
White’s request for re-examination was accompanied a letter from its representatives dated 29 September 2015 stating that there was evidence of prior use and prior publication of the Design.[1]
[1] And of the invention according to Innovation Patent no. 2015100568, not the subject of this decision.
Section 65(2)(a) provides that a ground for revocation will exist if the Design is found to not be a ‘registrable design’. Section 15(1) provides the relevant definition:
Registrable designs
(1) A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
(2) The prior art base for a design (the designated design ) consists of:
(a) designs publicly used in Australia; and
(b) designs published in a document within or outside Australia; and
(c) designs in relation to which each of the following criteria is satisfied:
(i) the design is disclosed in a design application;
(ii) the design has an earlier priority date than the designated design;
(iii) the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
Section 16 of the Act provides:
Designs that are identical or substantially similar in overall impression
(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.
(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).
(3) …
Determination of whether designs are ‘substantially similar in overall impression’ requires a weighing of the factors in section 19, the relevant parts of which are reproduced below:
Factors to be considered in assessing substantial similarity in overall impression
(1)    If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(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)    If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(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).
Evidence and Findings
On 22 August 2017 McConnell’s representatives wrote to the Office submitting that since White “has not filed evidence against the decision of the Designs Office to Certify …the oral hearing set for 18 October 2017 has not [sic] reasonable prospects of overturning the decision to certify the registration.” On 19 September 2017 McConnell’s representatives then requested that the hearing be “dismissed”.
I wrote to White’s representatives asking about their intentions with respect to the hearing having regard to the fact that there had been nothing more from them since their request to be heard following the 10 February 2016 ‘Notification of Intention to Certify’. In particular, White had not filed evidence in support and had not responded to McConnell’s evidence in support.
In the absence of a satisfactory reply I advised both sides that it was my intention to vacate the hearing date and issue a decision on the written record having formed the opinion that an oral hearing would not advance my understanding of the matter and cancellation of the hearing would not prejudice the position of either party.
No submissions were made either in connection with that expression of intention, nor in relation to the examiner’s reasoning in the ‘Notification of Intention to Certify’.
As stated, the Design product is described as a “Seat for a passenger vehicle”. Lowe states that McConnell designs and sells bus seats[2]; whether it makes those seats itself is not stated. Bamford states that White is an importer, distributor and retailer of ‘HIGER’ brand buses which are made in China (‘Higer buses’).[3] Bamford states that a third party contractor in China makes seats to order for Higer buses.[4] Bamford declares that in 2011 that Chinese seat maker was instructed to produce bus seats compliant with Australian laws governing such matters and that by 2012 those seats had made their way to Australia where they were publicly used.[5] Bamford states that the Design was not new or distinctive at its priority date, 23 September 2013, having regard to the design features of those seats made to order in China. Bamford further states that the section 69 material shows other bus seat designs publicly available in Australian before the priority date of the Design which provide a ground for revocation of the Design.
[2] Lowe [6].
[3] Bamford [1].
[4] Bamford [4].
[5] Bamford [9]-[10].
On re-examination of the Design, the examiner wrote that “although the designs submitted [with the section 69 evidence] do form part of the prior art base, they are neither identical nor substantially similar in overall impression to the [Design].”
My task is to make my own assessment of those issues, taking into account as necessary the evidence in support, being the later Lowe declaration which was not available to the examiner. I note in that regard that Lowe essentially references the Australian laws with which bus seats must comply, information which guides me with respect to that part of the Act which requires consideration of the Design creator’s freedom to innovate.[6]
[6] Sec. 19(2)(d).
First, some preliminary findings. Bamford and some other of the section 69 material are directed towards Innovation Patent no. 2015100568, filed contemporaneously with the application for the Design. I note that there is no claim that Innovation Patent no. 2015100568 itself prior publishes the Design and I make the finding that it does not.
Secondly, and with particular regard to that finding, there is nothing else in the section 69 evidence which might suggest that the Design is not new and so the question reduces to whether or not the Design is ‘distinctive’ as that term is understood in the Act.
Thirdly, although there is no direct evidence of the actual Chinese made bus seats which entered Australia in 2012 under order by White, the section 69 material taken as a whole carries with it a sufficient inference that the imported seats corresponded with the technical drawings therefor produced by the Chinese maker and shown in evidence. I am thus satisfied to count that material as part of the prior art base.
Fourthly, and for the purposes of section 19 of the Act concerned with the factors to be considered in assessing substantial similarity in overall impression, I am in agreement with the examiner that the standard which I should apply is the standard of an informed user,[7] being someone that deals with the Design product in the course of their daily work, such as a vehicle registration inspector or transport safety regulator.
[7] Sec. 19(4).
Finally, the section 69 evidence is to some extent evidence of the state of development of the prior art base for the purposes of section 19(2)(a). In particular, Bamford characterizes the Design product as “a 2/3 seat design … having two individual back support sections … separated by a bridging section”.[8] It is clear from the evidence as a whole that the reference to “2/3” is to a seating capacity for 2 or 3 persons and that the “bridging section” provides the seating location for the possible third person, necessarily being a small child. White catalogues for sale its so-called “Phoenix” and “Apollo” 2/3 seats. Further, the section 69 evidence shows the 2/3 seat design of a third party sold under the name “Traveller”.
[8] Bamford [14]-[15].
Turning to the merits of the matter, the view expressed by Bamford is that “the shape and configuration of [the Design] is not new and distinctive at its priority date” having regard to the section 69 material.
I am mindful of the direction given in section 19(1) that in deciding whether the Design is substantially similar in overall impression to anything in the prior art base, I must give more weight to similarities between the compared designs than to differences between them. Although there is no direct evidence of the matter I can reasonably infer that the design of a multiple occupancy bus seat of this kind is subject to certain physical constraints. Lowe provides evidence that such seats are also subject to detailed legal requirements[9] which I read as constraining in some ways the design of such seats.
[9] In particular, the Vehicle Standard (Australian Design Rule 58/00 – Requirements for Omnibuses Designed for Hire and Reward) 2006.
I have also borne in mind that the Design carries a Statement of Newness and Distinctiveness which is cast in general terms in so far as it refers to features of shape and configuration of the Design as a whole and does not highlight particular aspects of the Design as those which are new and distinctive.
In my assessment this decision is not improved or made more intelligible by the inclusion of representations of the prior art seats shown in the section 69 evidence. It is enough to say only that I have understood and am in agreement with the assessment made after re-examination that when comparing the similarities and the differences in each case, there are discernable differences in shape and configuration between the Design and the prior art in terms of the seat headrests, squabs, and the bridging sections (or third seats). Applying the standard of the informed user to the section 19 criteria (outlined above) I find those differences outweigh the similarities which the designs share.
It follows that I find the Design to be both new and distinctive.
Decision
The form of my decision is mandated by section 65 of the Act and after consideration of all of the facts I find no ground for revocation of the Design.
Accordingly, I direct that the Design be certified and I order that a Certificate of Examination be issued.
Debrett Lyons
Hearing Officer
Trade Marks and Designs Group
18 January 2018

[2018] ADO 1

18 January 2018