More justice, more speed, if you're small and Australian

A recent IP news bulletin from Australian law firm Allens Arthur Robinson discusses the genesis and current content of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 -- which even has something to say about designs. According to AAR,

"The Bill provides that the Federal Magistrates Court will have jurisdiction to deal with matters under the DA [that's the Designs Act 2003 (Cth)]. This proposed amendment implements the Advisory Council on Intellectual Property (ACIP) recommendation to provide parties greater access to justice. The EM [Explanatory Memorandum] indicates that small business may benefit from being able to prosecute their designs matters in a speedy, cost-effective and less formal tribunal".

The real thing? Coke sues Pepsi over bottle shape mark

Thanks once again to the invaluable ipwars blog for bringing our attention to Coca Cola's recent lawsuit down under against Pepsico over use of a bottle with a flared base. Here's a link to the ipwars article and here is the press story it references. The picture is borrowed with thanks from MIP's fine article "How Coca Cola protects its IP in Asia", according to which they have protection in many Asian countries. Will there be worldwide litigation? The Coke bottle has long been the paradigm case for 3D marks, so this might be an ideal test case.

Those with long memories will recall that Coke's attempt to register the bottle as a UK trade mark under the 1938 Act failed (In Re Coca Cola Co. [1986] 1 WLR 693, [1986] RPC 421 (HL) - link to decision here). It had originally been registered as a design, but that expired (in the UK) in 1940, and the House of Lords clearly had public policy concerns about allowing an eternal post-expiry "monopoly" as a trade mark. (The "original" design, according to Wikipedia, was registered as US Design Patent D 48,160).

However, following the demise of the 1938 Act it is now comfortably registered as CTM 2754067. Japan's IP High Court also recently allowed the registration as a 3D mark there.

Asian applications- an analysis

APAA, the Asian Patent Attorneys Association, held their Design Committee meeting in Jeju, Korea on 17th October under the joint chairmanship of Minako Mizuno and Peter Heathcote.  The meeting concentrated on practical issues of what can be filed as a design, and included whether:

• designs are available for separate component parts of products,
• designs are available for integral parts of products,
• designs are available for icons,
• multiple designs are available,
• sets are available,
• dashed lines can be used,
• statements of novelty are required.

 You can find the extremely detailed sets of responses from the official groups of Australia, Hong Kong, India, Indonesia, Japan, Korea, Malaysia, New Zealand, Pakistan, Philippines, Singapore, Sri Lanka, Taiwan, Thailand and Vietnam on APAA's 2010 website here. 

Entitlement to employee designs

Thanks to the IPWars blog for reporting an Australian design entitlement case, Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA.  The Federal Court reviewed a decision of the Deputy Registrar (reported as Collymore v Courier Pete Pty Ltd [2008] ADO 9; (2008) 79 IPR 608) on ownership of Australian designs 312217 and 312218 on rainwater tanks. 
Section 13(1)(b) of the Australian Act states that the owner is:
(b) if the designer created the design in the course of employment, or under a contract, with another person – the other person, unless the designer and the other person have agreed to the contrary...
Following Spencer Industries Pty Ltd v Collins [2003] FCA 542; (2003) 58 IPR 425, an Australian patent case which itself followed the UK case Patchett v Sterling Engineering Co Ltd  (1955) 72 RPC 50 (HC), the Federal Court held that the relevant tests were whether the employee was employed in a capacity where designing would be expected, or whether he had been specifically instructed to make the design:
"I accept the applicant’s submission that the approach of the Courts to the question whether an invention is created “in the course of employment” is to ask, “what was the employee employed to do?” If the employee was employed to make or discover inventions of the type ultimately produced, then that is work for which the employer has paid and the employer is entitled to the benefit of the invention. If the employee does not have any general duty to invent or duty of creativity, then the only basis upon which an invention can be said to have been created “in the course of employment” is if it has been created pursuant to a specific direction by the employer to undertake work which results in the creation of the invention."
In this case, Colleymore, the designer, was indeed an employee, but a factory worker who, the Court held, would not have been expected to make designs and was not instructed to make this one.  According to the judgment, "... he came up with the idea for the design for modular rainwater tanks as a result of watching one of his horses playing with a hose in the water trough on his property ... he then sketched his idea and refined it over a period of 10 days in his own time after work."  It had not been made in the course of his employment, and the design was therefore his property, not that of his employer. (Apparently neither horse nor hose made any claim to ownership).
Whilst some in-house colleagues might prefer a broader approach to the "course of employment" test, personally, I think the Court applied the right test, and one that applies as well or better to Europe's Article 14(3) RCD: where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law.

Statements of novelty

The ever-informative International Law Office newsletter carries a report by Lauren Eade and Lisa Lennon of Gilbert + Tobin on recent Australian case law, within which there is a useful discussion on Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163 that serves to illustrate the effect of a "Statement of Novelty".

The Australian Designs Act 1906 (now superseded but applicable to old designs) required a Statement of Novelty. In this respect it was the same as the UK design statutes (until the 2001 amendments which brought the UK Registered Designs Act 1949 into line with the new EU design law), and those of many other countries having a historical relationship with the UK. In the Designs Act 1906, “Statement of Novelty” was defined as "a statement relating to the representations of an article to which the design is applied that indicates those features of the representations in respect of which novelty or originality is claimed".

The general intention of a statement of novelty is to direct attention to particular aspects of a design registration, but its specific effects on validity and on scope of protection for infringement purposes have long been the subject of confusion. Very often, a Statement of Novelty would simply state that "The novelty resides in the shape and configuration [or pattern and ornament, or both] of article shown in the representations", but such statements could also be used to draw attention to particular parts of a design. For a fairly recent New Zealand case on wording and amending the Statement of Novelty, see AEP v Scholle IPONZ, 1/2002.

Chiropedic Bedding's design was for a single-sided 'posture top' mattress, incorporating a separate sprung section on top of the main body of a sprung mattress, and contained the following statement of novelty:

"Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations."

In the UK it was generally thought that, for validity purposes, the statement of novelty acts as a "disclaimer". That is to say, it acts as an admission that all other aspects of the design not mentioned in the statement are not novel. This was to lead to a catastrophe in the case of Evered & Co Ltd's Application (Design), 1961 RPC 105 (differing from older case law), in which an applicant filed two designs showing the same product but with different statements of novelty each directed to a different part - each denied the novelty of the other, so neither was valid.

After a detailed review of the Australian and UK authorities, the Federal Court in Chiropedic cited with approval the remarks of Slade LJ in Sommer Allibert (UK) Ltd v Flair Plastics Ltd [1987] RPC 599 to the effect that "While the court does not have to assume that it [the statement of novelty] is correct, it precludes the proprietor, who has obtained his registration on the grounds that certain features of the design give novelty to it, from thereafter denying their novelty and asserting their immateriality, so as to extend the scope of the protected design."

In considering the scope of the design for infringement purposes, UK case law wavered. Generally there could be no infringement if a competing design did not take the features referred to in the statement of novelty, as the remainder of the design, lacking novelty, could not be validly protected on its own. But the situation of a competing design which takes only the the features referred to in the statement of novelty and not the entirety of the design has been treated inconsistently. The UK case law (for example in Sommer Allibert) appeared to have reached a state where greater weight was attached to the features referred to in the statement of novelty, but the remainder of the design could not be ignored, though it was downplayed.

The question of the effect on infringement did not directly arise in Chiropedic, but the Federal Court in Chiropedic quoted paragraph 100 of the Australian Designs Law Review Committee Report (Report on the Law Relating to Designs, the "Franki Report") of February 1973 to the effect that "in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair." This would seem to be broadly in line with the UK Court of Appeal in Sommer Allibert.

This case therefore usefully highlights the difference in effect between a "partial design" and a Statement of Novelty. The former defines the part of what is shown which is the subject of the design monopoly, under laws (such as the new EU law) which permit protection of the designs of parts of products.

By contrast, when the latter is used, it is the entire design of the product which is protected; under the old UK law, parts of products could not generally be registered in isolation and, according to the Evered case, a Statement of Novelty could not be used to achieve the same effect.