Apple’s Frameless Monitor Framed as Non-Distinctive and Revoked in view of its Prior Disclosure of Framed Monitor
The Australian Designs Office
The Australian Designs Office, in its first published decision for 2013, decided recently to revoke Apple Inc.’s Australian design registration no. AU334543 for its “frameless” or “borderless” or “edge to edge” visual display monitor. A copy of the decision is available here.
Whilst Apple’s design was considered novel relative to the prior art, it was revoked following post-grant examination on the basis that an informed user would regard it as lacking distinctiveness in overall impression compared with Apple’s own prior-published design of a “framed” “LED Cinema display” monitor.
Problematic to Apple’s case were various factors including:
- difficulties in applying Apple’s “Statement of Newness and Distinctiveness” to the representations of the design, on account of its confusing use of different types of broken lines for different purposes in its representations;
- Apple not being allowed to substitute photographs of its prior-published design for the images found and relied on by the Examiner for the purpose of comparison, particularly as the photographs were deemed to “amplify differences” between the designs (based on features such as colour not relevant in this case as design features), even though the images allegedly obscured some relevant features; and
- Apple’s reliance on evidence from an expert who was not considered to fall in the requisite category of an “informed user” of the design, for the purpose of assessing distinctiveness, and whose evidence was otherwise found to be faulty.
The Design
The features Apple claimed to be new and distinctive are described in its “Statement of Newness and Distinctiveness”.
Apple’s Prior-Published Display Design
The Examiner had found the prior-published display published on historical pages of Apple’s website, which had been cached on the Internet Archive’s website at <archive.org> and were via the “wayback machine” facility on that site.
Apple’s Evidence of Prior-Published Display
It was not disputed that “the only point of departure of the Design from the earlier disclosure was in a visual feature of the interface between the display face and the remainder of the product”.
However, Apple argued that the website images were insufficient for the purpose of comparing the designs, claiming that relevant design features were obscured in those images. It referred to an earlier Designs Office decision in Sportservice Pty Ltd [2007] ADO 6 and argued that, as per the approach taken in that case, where there is uncertainty it is appropriate to file alternate images/photographs to be used for the comparison.
Apple emphasised the “highly prominent metallic rim surrounding the screen” in the photographs of the prior-published design. The prominence of the rim was said to be brought about chiefly by the contrast in colour (i.e. “between the bright, metallic appearance of the silver aluminium rim and the highly reflective, black screen glass that covers the display panel and bezel and abuts the rim”).
The Hearing Officer criticised Apple’s (and others’) “misplaced reliance” on Sportservice Pty Ltd [2007] ADO 6, noting his observation that it was often “motivated by a desire to introduce material which through use of colour, magnification, orientation or otherwise, is thought to amplify differences between the relevant design and the prior art material” which “in virtually all instances .. are immaterial to the comparisons to be made”. [Emphasis added].
Regarding a proper approach to the taken, the Hearing Officer stated that “If the representations of a registered design are unclear, they are simply that – unclear – and are not rendered clear or interpreted and better understood by production of the actual article or other form of capture of its image”. If, on the other hand, a matter has come to hearing and there is uncertainty about the prior art disclosure, then the options open to the delegate are either to decide that the disclosure insufficiently anticipates the design at issue for the purposes of newness or distinctiveness, or to revert the design at issue back to examination for further and better information. It is not for the parties to adduce their own evidence of the prior art found by the examiner.
Features of Prior-published Display
The Hearing Officer determined that he had “no trouble viewing and understanding the Prior Disclosure, unaided by further material”.
Accordingly, distinctiveness of the registered design was assessed relative to the images of the prior disclosure found by the Examiner, which was said to feature “a display screen having three principle parts – a screen, a supporting body, and a stand. The screen is housed within the body such that the body forms a visible rim or frame to the screen which is seen in front view and in all front perspective views. The screen becomes invisible to the viewer when the product is in side view and through all perspective views”.
Apple’s Reliance on Declaration from an Alleged “Informed User”
Whilst Apple was able to obtain a declaration from a manager of an electronic goods retailer who stated he believed the registered design to be distinctive over the prior art, this evidence was not persuasive for various reasons.
Firstly, whilst Apple presented the declarant as an “informed user”, the Hearing Officer did not agree.
The Hearing Officer defined the “informed user” as “an ordinary consumer of electronic goods, familiar with computers and computer related products, who takes an interest in new products of that kind released to market either as a potential purchaser of those goods or as a keen amateur computer enthusiast”.
He held that the Manager was unlikely to be an informed user of the design since his management roles were likely to be far removed from the day to day sales of electronic goods – and there was nothing in the declaration to suggest otherwise.
Further, the Hearing Officer concluded that the Declarant’s evidence was in any regard faulty and that none of the declarant’s statements were directly of assistance in determining the distinctiveness issue.
For example, criticisms of the Declaration included that the Declarant: based comments not on the prior-disclosure of record but on photographs from Apple which were not in evidence and which he was simply informed, and accepted, showed a display of the same design as the prior-disclosure on record; did not make it clear he was familiar with the products in question; was not clear as to whether he directed his mind to newness or distinctiveness; was misdirected as to the proper inquiry; did not use language to describe the products which could assist the hearing officer; and made statements for which he has no apparent qualification.
The Hearing Officer also made some enquiries of his own of some websites featuring reviews of electronic goods, including Apple’s products, which he noted did not discuss frameless screens from either a functional or aesthetic standpoint).
Determination Applying Criteria of s 19
As Apple had filed a “Statement of Newness and Distinctiveness”, this had to be considered when determining the distinctiveness of the registered design relative to the prior-published design.
However, there was some difficulty in applying the statement to the representations showing features of the design on account of the different types of lining used by Apple in its representations creating some ambiguity.
When comparing the designs, from the standard of the informed user, the Hearing Officer elected to pay less attention to features in broken line that were not explicitly described by the “Statement of Newness and Distinctiveness” and, applying the other relevant factors in s 19 of the Act, he concluded that the design was not distinctive, including because:
- in both quantitative and qualitative terms, the greater part of the design is substantially similar to the other design, having regard to the amount and importance, respectively, of that part in the context of the design as a whole;
- notwithstanding the problems with the declarant’s evidence, he found it instructive as to what it did not say, that is there was nothing to point to the edge design as taking on some heightened significance; and
- the similarities between the designs outweighed the differences and more weight is to be given to the similarities.
Take Home Messages
This case offers various cautions and take home messages, including by:
- warning designers of the possibility that images of earlier designs, even if no longer in use, can potentially invalidate future designs, particularly if the images do not clearly show features distinguishing the designs;
- providing guidance about inadequate images and amplifying images as well as regarding misguided reliance on the Designs Office decision in Sportservice Pty Ltd [2007] ADO 6;
- stressing the importance of clarity in both the drawings/representations and “Statement of Newness and Distinctiveness”; and
- highlighting the importance of finding appropriate expert witnesses and ensuring that statements from expert witnesses are relevant to the consideration of distinctiveness.