Colgate-Palmolive Company [2011] ADO 1 (3 February 2011)
Last Updated: 25 February 2011
| DELEGATE: | T. E. Williams |
| REPRESENTATION: | Owner : written submissions by Tracey Webb of F.B. Rice & Co. |
| DECISION: | 2011 ADO 1 Design found to be new and distinctive. Examination completed and s. 67 Certificate of Examination to be issued. |
Background
- Colgate-Palmolive Company (“the Owner”) filed design application 13749/2008 , claiming a priority date of 15 February 2008. This resulted in design registration 323015 (“the Registered Design”). The product to which the Registered Design relates is described as "Set of bristles for a toothbrush". The application was accompanied by a request for examination of the design after registration. The representations shown as figures 1, 2 and 5 in the Register of Designs show the significant features of the Registered Design to be as follows:
- Section 65(2)(a) of the Designs Act 2003 (“the Act”) creates a ground for revocation of a registration if the design is not a registrable design. Section 15(1)states that a design is registrable if it is new and distinctive compared to the prior art base.
- A first examination report issued objecting that the Registered Design was not new or distinctive because it was substantially similar in overall impression to a number of designs in the prior art base. The Examiner cited the following prior art, all belonging to the Owner and of earlier priority date:
| Reference[1] | |
| D1 | OHIM-000105655-0018 |
| D2 | OHIM-000230107-0009 |
| D3 | OHIM-000230107-0001 |
- In a later report following submissions from the Owner, the examiner maintained that the Registered Design was not new and distinctive over, in particular, D2, which is closest in overall appearance to the Registered Design. Relevantly, D2 shows black-and-white representations of a toothbrush with a handle apparently identical to the Registered Design, and a head with the salient features shown below
- The Owner thereupon asked to be heard but, in view of that which I will set out below, no hearing has been necessary.
Earlier decision
- Hearing Officer Lyons has already dealt with the distinctiveness of two other of Colgate’s registrations, 320882 and 320884 (“the other registrations” or “the Designs”), deciding that a certificate of examination should issue. The other registrations are simply halftone renditions, with some portions shown in dotted lines, of a toothbrush with a head that would potentially constitute the head of the toothbrush shown, in colour, in the Registered Design. Mr Lyons found that the Designs were distinctive in the face of cited OHIM designs that included D2.
- In the present matter, the Registered Design includes the handle of the toothbrush where, in the matters with which Mr Lyons was concerned, the handles were shown by dotted representation only. His reasoning is not binding upon me, but I find his approach is, with the necessary modification, applicable to the present matter.
- Having noted the legislative framework, Hearing Officer Lyons made the following observations.
A significant visual feature of the Designs is that either the bristles, or a large proportion of the bristles, are shown in two-tone or two-colour, however you wish to perceive them - the tip portion being a different tone or colour to the remainder of the bristle.
Each of the prior art citations illustrates a toothbrush having a head supporting tooth cleaning elements. I note that there is nothing in the prior art showing 2-tone bristles, albeit that there are toothbrushes with differently coloured sets, or tufts, of bristles.
As expressed in the Reckitt Benckiser case:
“the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.”
I have made that assessment for myself, adopting so far as possible the mindset of the informed user (see Apple Computer Inc [2007] ADO 5 (20 September 2007)). Whilst the attorney for the Owner posited that the informed user in this instance might be an oral hygienist or an oral health educator involved in the provision of oral health services/education and whilst the primary examiner reasoned that the informed user was essentially a member of the public, I am satisfied that the relevant person is not a toothbrush designer nor is it a person who is unaware of what is available in toothbrush design, but would probably include both professionals and consumers who had (in either case) made it their business to be particularly aware of options available by way of the layout of toothbrush bristles.
I am not satisfied that a ground of revocation has been made out. On my assessment of the standard, an informed user at the priority date would regard the Designs as distinctive in overall impression compared to the prior art base.
- I think it is proper to define the informed user as Mr Lyons has done in order to exclude a particular group of ordinary consumers, those who simply want value for money and are not concerned with other differences between one brush and another. Such consumers can be contrasted with informed users who, as Mr Lyons has noted, have gained some knowledge of the range of shapes available[2]. This would probably arise either because the informed users were dental professionals required to advise patients as part of a consultation or because they were consumers with a particular interest in the matter – perhaps because of their own gum or dental sensitivity, or through a particular interest in selecting suitably designed brushes for their children or others.
- Mr Lyons went on to direct that a certificate of examination be issued in relation to the Designs.
- Both in Mr Lyons’ decision and on the official file for the Designs, there has been clear recognition of the need to define just who the informed user might be. I think it is fair, given what I have said above, to infer that the informed user would be more concerned with the cleaning abilities of the brush, and hence with the shape and arrangement of the actual tufts of bristles, than with the appearance of the brush in terms of colour or tonality.
- Under s 19, if the Registrar is required to decide whether a design is substantially similar in overall impression to another design, the Registrar is to give more weight to similarities between the designs than to differences between them. The Registrar must also (in the absence, here, of any statement of newness and distinctiveness):
- have regard to the state of development of the prior art base for the design;
- 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
- have regard to the freedom of the creator of the design to innovate.
- As to the last of these, the shape of the head of a toothbrush is clearly somewhat limited by practical issues, since it must ultimately be shaped to easily brush the tops and sides of the teeth within the confines of the mouth. The handle is not so constrained except in so far as it must be comfortable to grip, and have an appropriate length and width, it is reasonable to assume that the visual appearance of the handle, and particularly its shape, is more amenable to innovation.
- In the present matter the Registered Design is shown in colour, an aspect of visual appearance which adds impact to the observable physical differences between the respective heads shown in the Registered Design and the prior art. That is not to say that there is not a “family resemblance” between the Registered Design and the prior art[3]. This is particularly obvious in the handles of the Registered Design and of D2, which are, so far as I can tell, identical. However, as I have explained, I think the informed user will be more inclined to focus on the head of the brush than the handle, which, in terms of s 19, would be regarded as less important.
- As to the heads, the use of colour both augments the physical differences between the respective brush heads and camouflages the similarities, in a way to which greyscale rendition, the import of which Mr Lyons has already considered, can only allude. The difference in visible impact is striking to the eye. The informed user will, however, go beyond this and note the structure beneath the two-tone treatment. While there is a family resemblance there are equally significant differences in the the tufts of bristles on the brush heads.
- The applicant’s patent and trade mark attorneys, FB Rice, have filed written submissions that add detail and emphasis to those previously available to the examiner. Those later submissions carefully dissect the differences between the Registered Design and the cited prior art including D2. Without drawing out this decision by repeating that analysis, it would be apparent to the informed user that, as a result of these differences, the Registered Design is intended to have a more probing or penetrating action along almost the full extent of the side profile (see fig 5 above). Thus, I do not think that it is correct to say, as was said in the examiner’s report, that the similarities are “overwhelming”. Rather, when I define the informed user as Mr Lyons has done, it seems to me that the effect of colour has done much to augment the minor but significant physical differences between brush heads of the Registered Design and the prior art, including D2. When allowance is made for the identical appearance of the handles, I do not believe that the informed user would conclude that the Registered Design and the prior art are substantially similar in overall impression.
Decision
- I am not satisfied that a ground of revocation has been made out. On my assessment of the standard, an informed user as at the priority date would regard the design as distinctive in overall impression compared to the prior art base.
- I direct that examination of this design be taken as completed. The provisions of section 67(3) now apply. I direct that a certificate of examination be issued in relation to registration 323015.
[1] From the database of designs registered with OHIM (The Office of Harmonization for the Internal Market).
[2] See Review 2 Pty Ltd v Redberry Enterprise Pty Ltd, [2008] FCA 1588; 79 IPR 214 at [19]- [21]
[3] As the examiner was aware, relevant designs are applied by the Owner to toothbrushes sold under the trade mark 360º The Registered Design is applied to toothbrushes sold under the trade mark 360º Deep Clean, and D2, relied on by the examiner, is applied to goods sold under the trade mark 360º.
[2] See Review 2 Pty Ltd v Redberry Enterprise Pty Ltd, [2008] FCA 1588; 79 IPR 214 at [19]- [21]
[3] As the examiner was aware, relevant designs are applied by the Owner to toothbrushes sold under the trade mark 360º The Registered Design is applied to toothbrushes sold under the trade mark 360º Deep Clean, and D2, relied on by the examiner, is applied to goods sold under the trade mark 360º.
