– Evidence establishing the state of the prior art is important, as this evidence may influence the other statutory factors in assessing distinctiveness.
– Prior art evidence should be limited to before the priority date of a design to be fully persuasive.
– Side by side comparisons between a design and the prior art may assist in demonstrating a visual effect in favour of distinctiveness.
– An appropriate Statement of Newness and Distinctiveness indicating any specific new and distinctive features may increase the prospects of success.
This is a decision of IP Australia as the Australian Designs Office on the validity of a registered design for a coffee maker by Pi-Design AG (Pi). In Australia, designs are examined only for formalities before registration. However, it is necessary to request substantive examination to enforce the registered design – this process is called “certification”.
In this case, Pi obtained registration for its design for a coffee maker – Design No. 201515424, Registration No. 365096 (the Design) – and requested examination of the Design. An examination report issued, citing Pi’s earlier design for a coffee maker, Design No. 201514163, Registration No. 363750 (the Earlier Design), as rendering the Design invalid. After a response to the examination report was unsuccessful, Pi requested to be heard on the issue.
Pi conceded that there were many similarities between the Design and the Earlier Design. However, Pi submitted that there was a significant difference in that the Design incorporated double walls for the sides and bottom of the coffee maker, whereas the Earlier Design only had single walls.
The primary issue was whether the Design was distinctive over the Earlier Design, as it was quickly held that the Design and the Earlier Design were not identical due to the double walled appearance of the Design. Hence, the Design was new.
The hearing officer agreed with Pi’s submission that the informed user was someone familiar with coffee makers but noted that the Design and Earlier Design relates to a specific type of coffee maker – a non-electric “pour-over” coffee maker (in contrast to an expresso machine, for example). Accordingly, in the hearing officer’s view the informed user would “pick out” smaller differences between two coffee makers of this type than between a pour-over coffee maker and an expresso machine.
The hearing officer then considered the statutory factors in assessing substantial similarity between the Design and the Earlier Design from the point of view of the informed user, being:
- giving more weight to similarities than differences;
- having regard to the state of development of the prior art base;
- the features identified in any Statement of Newness and Distinctiveness (SND);
- the amount, quality and importance of any similarities; and
- having regard to the freedom of the design creator to innovate.
State of development of prior art base
Pi had submitted evidence of the state of the prior art for coffee makers. However, the hearing officer noted that this evidence was defective as it included results that were published after the earliest priority date of the Design. Despite this defect, this evidence was of some assistance in assessing the freedom to innovate. The hearing officer referred to the search conducted during examination and noted that the prior art base was crowded with many types of coffee maker designs, indicating that smaller differences may be more significant.
Freedom to innovate
In considering this factor, the hearing officer noted that many coffee makers of the pour-over type shared common features that were dictated by their function, such as the conical filter holding portion, its location above the decanter and the use of a handle or thermal collar to safely transfer the hot liquid. Also, the hearing officer noted from Pi’s evidence that this type of coffee maker had a small footprint and there seemed a preference for a relatively simple design, indicating there was market demand for these features.
Amount, quality and importance of similarities
The hearing officer held that there was a large amount of similarity, as conceded by Pi, but did note that the greater portion of the Design incorporated the double walled appearance. The quality and importance of the similarities were informed by the freedom for the designer to innovate. Hence, those features in the Design and the Earlier Design that were dictated by function, such as the conical filter holding portion, as well as the features dictated by market demand, such as the slimness and simplicity of the design, were to be discounted. Accordingly, the large amount of similarities between the Design and the Earlier Design were offset by the quality and importance of those similarities being relatively low.
Statement of Newness and Distinctiveness
The hearing officer found the SND of the Design was not helpful as it only generically referred to the shape and configuration of the coffee maker. There was not any reference to a specific feature that was identified as being new and distinctive.
Assessment and decision
The large amount of similarities between the Design and the Earlier Design were to be given more weight, and so suggested a lack of distinctiveness. However, this was offset by the state of the prior art suggesting small differences are significant, the quality and importance of the similarities being relatively low and the freedom to innovate. These factors were in favour of a finding of distinctiveness.
The hearing officer found that the factors were finely balanced but ultimately was persuaded to find that the Design was distinctive over the Earlier Design. This was assisted by the informed user being found to readily note smaller differences and by Pi supplying a side by side comparison of the Design and the Earlier Design when in use, as shown in the accompanying picture where the single walled design is on the left and the double walled design is on the right.
This side by side comparison accentuated the double walled appearance of the Design and its associated visual effect due to the contrast provided by the coffee to the double walls.
This decision illustrates the importance of evidence to establish the state of the prior art, which in turn may influence the other statutory factors in assessing distinctiveness. In the present case, Pi was able to show through its prior art evidence that the large amount of similarities between the Design and the Earlier Design were offset by the other factors of the quality and importance of similarities and the freedom to innovate.
However, Pi’s prior art evidence was not fully accepted as it included designs published after the earliest priority date of the Design and reliance had to be placed on the prior art search conducted by the Examiner.
Also, providing a comparison between the designs enabled Pi to emphasise the visual effect created by the double walls that persuaded the hearing officer to find that the Design was distinctive.
The case further demonstrates the importance of using an appropriate SND to indicate new and distinctive features. If the SND of the Design had focussed on its double walled appearance, then it is likely that the hearing officer (and possibly the examiner) would have more readily found in favour of distinctiveness of the Design.
Authored by Andrew Lowe