Protecting Extrusion Profiles by Design Registration has Gotten Tougher

Building products sold by length, such as aluminum profiles used for window frames creates a problem. Leading manufacturers in this competitive market want to mark their products to discourage customers purchasing cheaper alternatives. Quite apart from the fact that end users do not generally want makers’ marks conspicuously showing on their window frames, such marks have to be stamped on which is time consuming. 

In the past, Adv. Adi Levit, then of Seligsohn et Gavrieli representing Klil, a leading aluminum profile manufacturer, created a new solution; registering profiles as design applications.

Strictly speaking, this could have been viewed as manipulating the system since most of the elements of the profile are strictly functional. Elements that are not viewable in the finished product when installed are not really design elements, and extruded scratch marks are more correctly trademarks, but often lack the inherent user recognition to be registered as such.

Strictly speaking, this could have been viewed as manipulating the system since most of the elements of the profile are strictly functional. Elements that are not viewable in the finished product when installed are not really design elements, and extruded scratch marks are more correctly trademarks, but often lack the inherent user recognition to be registered as such.

The Deputy Commissioner Jacqueline Bracha has now revisited this somewhat specialist issue. The name of applicant, representative and details of the design application number have been withheld so this case can be referenced as Ruling re Design XXX to Applicant YYY represented by ZZZ, by Jacqueline Bracha, 27 May 2018. The pictures used to illustrate this write-up are just that, pictures. They may or may not represent the product ruled on here.

Prosecution History

This ruling concerns a couple of design applications submitted on 1 Feb 2016 and 17 March 2016 respectively, both for profiles. The first Application was examined on 20 April 2016, and the Examiner considered them lacking in novelty in light of earlier registered designs of the same Applicant and thus registration was prohibited by Section 30(1) of the Patent and Design Ordinance 1924. The second application was examined on 14 June 2016 and a similar Objection was raised.

window frame 2

On 7 June 2016, representatives of the Applicant met the Examiner and the Head of the Trademark Department with the intent to persuade them otherwise, based on the differences between the application and the registered design as viewed. The Applicant argued that the differences were more than the similarities, and were not purely functional. The Applicant showed examples of window frames made from both the registered and the new profiles to emphasize the difference between them. At the end of the meeting, the Applicant was invited to submit their claims regarding each application in writing, emphasizing the differences.

On 21 July 2016, the Applicant responded to the Office Actions and emphasized the differences, referring to the drawings.

There were several further rounds of correspondence between the Applicant and the Examiner, during which the Applicant was requested to provide images of the finished product [presumably the window frame – MF]. The main difference that the Applicant noted, was that the new Applications show a ‘clean’ window frame, whereas the previously registered ones have a ‘rustic’ look, since the slot running along the front surface of the profile was removed.

On 20 April 2017, the Applications were rejected. Hence the appeal before the Deputy Commissioner.

It is emphasized that Design Application No. WWW had successfully been registered, despite the similarities to other registered profiles since the Examiner was persuaded that the differences were significant. It is noted that also in this case, the differences are on the front of the profile, which creates a new impression due to the lack of the slot.

The Applicant submits that the Examiner should have registered the design applications since other designs in the same series have been registered. Furthermore, all the designs in the series could be registered as a system.

The Deputy Commissioner notes that to the extent that other designs were erroneously registered, this does not oblige the Patent, Design and Trademark Office to repeat that mistake. See for example Appeal 66183/06/11 Shmuelovich  vs. State of Israel, 26 October 2014.

The Authority can change its ruling from a decision given in error and is not obliged to repeat that error.

It will be noted that the Registrar of Designs is NOT authorized to cancel a registration unless a third party requests cancellation based on a prior art publication –Appeal 733/95 Arpel Aluminium ltd vs. Klil Industries ltd, 51(3) 577. Thus even if Ms Bracha decides that the current designs should not be registered, and if this implies that previously registered designs were allowed in error, that does not authorize her to rule that such previously registered designs  should be cancelled. In light of this, Ms Bracha refrained from opining on how this decision affects previously registered designs.

The Applicant’s Claims

extrusion profiles

Miscellaneous extrusion profiles

The Applicant claims that there is room to allow the registration of the series of designs as a system application, since the profiles will be purchased together to assemble a finished article, such as a window. The Applicant submits that this assertion conforms to previous patent office rulings.

As to the registration of the designs, the Applicant submits that there are significant differences in form between the previously registered designs and that of the current application.  These include both elements on the visible surfaces of the installed frame, and indentations and slots that are not visible in the finished window, and that the new designs presents a clean modern line, whereas the registered designs present a more rustic appearance. The slot [could be indentation. some sort of depressed feature is indented –MF] along the front face has been cancelled, and this creates a purposefully different appearance. Furthermore, this results in additional differences in other parts of the profile.

The Applicant further claims that in light of the similarities between the inner lines of the design, they are registerable with a declaration of novelty regarding the front surface. Furthermore, the relevant ‘eye’ is that of the end user and the architect, and thus it is the visible surface of the installed window frame that matters.

RULING

Section 30(1) of the Patent and Trademark Ordinance 1924 sets out the conditions for design registration as follows:

(1) The registrar may on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not previously published in Israel register the design under this Part.

The main question in this instance, is whether, under the Ordinance, the applied-for designs are new with respect to the registered designs. In other words, are the changes that the Applicant proposes sufficient to establish novelty or not?

There is established case-law that requires that when making the comparison between products, or a design Application and the prior art, the design should be considered in its entirety, but with an emphasis on the features that draw the eye,  However, functional elements should not be considered . Thus the similarity in the functional elements does not hinder registration, but the differences do not help either (see Russell-Clarke and Howe on Industrial Designs, 8th Ed., p. 146 (2010). See also the ruling regarding design applications 50200, 50202, 50519, 50902 and 60909 to Victualic Company, 12 February 2012.

These considerations are the result of the intention that design registration protects new forms of desirable objects that attract the eye of the consumer, as ruled in Appeal 7125/98 Mipromal Industries Jerusalem vs. Klil Industries p. d. 57(3) 702, , 8 May 2003, on pages 710-711 of Judge Rivlin’s ruling:

The design registration is intended to provide protection for novel forms of products. The protection is intended to protect the individual’s interest, but also that of the public by encouraging the development of new or original aesthetic designs. The protection is given for the unique form of the product, as the eye discerns it…the form should draw the eye of the relevant consumer in a manner that influences his choice of a specific product. Together with this, in addition to the positive requirement of drawing the eye, protection is not available – due to the end of the clause – for articles that are fully functional, i.e. having purely functional forms.

….

Given this general rule, one has to consider whether the differences are sufficient and, in this regard, it is not the number of differences that matters, but the effect of them taken together.

However, minor differences need to be significant and not merely minor differences that are known in the relevant industry.

As a rule, the design should have a form or decoration that is substantially different from that known previously, and minor differences as generally accepted in industry are not sufficient to render a design novel or original under the ordinance. See Seligsohn, The foundations of Copyright, Trademarks and Designs, page 196.

Application of these general rules to this instance leads the Deputy Commissioner to conclude that the present applications cannot be registered. The differences that the Applicant points to boil down to the removal of a slot on the front face of the assembled frame. The other differences are simply the result of the cancelling of this slot.

window frame

The Applicant’s claim that the relevant eye is that of the customer or the architect does not help since, if this was the case, there would be no point registering the hidden surfaces [typically the section through the profile – MF] but only the form of the finished window. However, the Applicant has registered hundreds of profiles that include internal cavities and inner surfaces that are not visible in the assembled and installed frame, and many of them claim novelty for the inner parts.

Windows-frames

Even if she were to accept the Applicant’s position that the current applications be considered, unlike in the past, only with regard to the visible surface of the assembled and installed window frame, the Deputy Commissioner ruled that a smooth frame without any extruded protrusions or indentations is not new. Although the cited frames did not have a clean front surface, such a front surface is known in other extrusion profiles for frames.

In other words, when considering the profile as a whole, it is insufficient to refer to differences that exist in the concealed parts of the product and on the front face. These differences are trivial and do not impart novelty to the design. As to the front surface alone, the appearance is regular and accepted in the industry. It is noted that if the Applicant desires to be examined on the front face alone, the remaining sections should have been disclaimed with dashed lines. By not doing so, the Applicant has indicated that the concealed parts are integral to the design and the extrusion should be considered in view of its cross-section under Section 2 of the Ordinance.

Not only the Applicant considers that the profile is the complete article, but the Supreme Court in re Klil held this and accepted the finding of the District Court and ruled that:

In this instance, the District Court held that the correct comparison between the products has to be by comparing the profiles as sold – as six meter long extrusions, piled up on shelves such that the customer can see the section – and not as they appear when joined with other elements and installed. In consequence, it is insufficient to consider only the external appearance of the profile, as they appear to the final customer, rather one has to consider the similarities prior to assembly, from all angles, including the section.

Similar to the Court of First Instance, I also hold that the differences indicated are insufficient to rule out infringement, since the general impact of the appearance of the section and the visible surfaces leads one to conclude that the new profile is a blatant copy of the registered design. When applying the appearance test it is insufficient to go into the minor aspects of the design and there is no need to examine the product with a magnifying glass to determine the differences. As the District Court found, the profiles have the same slots, protrusions and indentations, and similar dimensions. The differences noted are insufficient to be memorable and so the District Court seems to be correct that the relevant consumer is likely to confuse the profiles, particularly where he comes across them separately. It is noted that the District Court determined as a matter of fact that shelf fillers do not necessarily pile up these profiles in adjacent piles.

Since the Israel Supreme Court has ruled on how profiles are to be considered under the Patent and Design Ordinance, the Deputy Commissioner did not see herself as having the freedom to dissent from their determination. However, she noted that it is possible that with the entry into force of the Design Law 2017, it may be appropriate to reconsider the appropriateness of this case-law with respect to registered designs.

The Design Law draws inspiration from the European legislation COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs and the basic definitions of the design and product in the (new) Law are taken from it – see the words of explanation of the new law from 6 July 2015).

The term product (מוצר) [perhaps literally object of manufacture] replaces the [archaic] term חפץ [desirable in the sense of a product, chattel?] that appears in Section 2 of the Ordinance, and is similar to the term that appears in the European legislation. The definition reflects, inter alia, the changes in technology since the Ordinance was legislated.

The term ‘design’ replaces the term ‘example’ that appears in the Ordinance. The term is not intended to widen or narrow the scope of protection that the law provides. The new term implies, inter alia, the technological changes that have occurred since the ordinance was legislated. The definition is the same as that found in the European Law, and emphasizes that the design is the general appearance of the object or a part of it, that consists of its visual elements.

It is noteworthy that in 2014, the European Office for Trademarks and Designs (then the OHIM and now the EUIPO) by which the majority of the elements of a profile are not registerable as a design, appear from the front face and marks thereon:

“As far as understood from the submission of the Holder technology driven features and mechanical fittings form up to 95% of the design of the profile, and the only features in which the competing products may differ, are those indicated in its submission, i.e. curving of the walls and the marker. In other words, all essential features, 95% of the appearance of the profile, fall in the exclusion pursuant to Articles 8(1) and (2) CDR. Should it be the case, the design has to be excluded from the protection as it does not fulfill the requirements of protection of a Community design. (ALUPROF S.A. v. ALU SYSTEM PLUS JJM KUCHARSCY [2013] OHIM)

The European Trademark and Design Office recently affirmed this ruling in re INDECO INDECO S.A v. BONARI Sp. z o.o. [2017] p.5 EUIPO (published by Darts IP).

The Deputy Commissioner considers that this sheds light on the question raised by the Applicant as to whether the profiles can be registered as systems of manufacturables under regulation 5 of the Design Regulations 1926, which will be replaced by Section 1 of the Law when it comes into effect.

The condition for registering manufacturables as a system under the Law, is that “the visual differences are trivial.” If we consider the appearance of an extrusion profile from all sides, including internal elements, and relate to the differences between the projections, protrusions, slots, as significant and important differences, then any differences in such protrusions and slots, even those required for coupling the different elements together,  would be sufficient to prevent them from being registered together. However, if the profile is examined ONLY from the outer face visible to someone looking at a window or door frame, all the profiles that link together to create the door frame could be registered as a system since they would then have identical appearances, or only insignificant differences.

That said, since there was no request to register the profiles as such a system in this case, and since she had determined that the designs are not new, the Deputy Commissioner did not see herself required to address this question under the current law.

In conclusion, the application for registration is rejected.

Ruling re Design XXX to Applicant YYY represented by ZZZ, by Jacqueline Bracha, 27 May 2018.

COMMENT

We note, without enthusiasm, that the Deputy Commissioner has asserted the existence of flat front faces of extrusions in the prior art. We think that that this is unworthy without referencing at least one example – not necessarily from the register and not necessarily manufactured by the Applicant whose name was withheld from the ruling.

Without images available, it is very difficult to truly appreciate the differences between the profiles, but the lack of a slot running along the visible surface does create a smooth frame lacking all distinguishing features so it seems reasonable to conclude that this is not new and cannot be registered. I tried to argue a case for registering a gabled beverage carton lacking the standard screw topped spout but featuring a score line along the roof and ridge for easier formation of a spout for pouring. I was unsuccessful, and it is comforting to see that other Attorneys are having similar difficulty registering variants of previous designs. However, Israel does not have a petty patent system. Arguably there is a need to prevent objects of manufacture being immediately copied by competitors such that customers cannot tell where their product originates.

There has recently been a sea change in the registerability of designs in Israel. The Ordinance is archaic and only requires absolute local novelty. Examination was more based on formalities and less on substance. However, what the Israel Design Examiners are now doing is to look for some sort of design step and not merely for absolute novelty.  In my opinion this places the bar for registerability too high. It should be possible to register unique items of manufacture that may be near variants of previously existing designs, combining different features known from different competing products. In many jurisdictions registration is just that; there is no substantive examination for novelty, but merely a comparison of the various views for internal consistency. That said, the current decision is in line with other recent rulings, both published ones and rejections I’ve had from Examiners based on the differences between the application and the prior art being insufficient to provide novelty and originality.

I have a few local clients that register designs in 10 or 12 jurisdictions and in my experience the leading jurisdictions generally do not seem to conduct substantive examination but rather a formalities based one for internal consistency, appropriate classification and so on. However, the standards are not consistent across jurisdictions. Dashed lines are treated differently, disclaiming is possible in some countries but not in others. Where an object folds, the folded and unfolded configurations are sometimes considered one design and sometimes two. In Israel, there is a circular that states that products having open and closed configurations should be shown closed and in one open position. I can see the value in standardization of registration, but some products cannot reasonably be described in only two configurations, or it is impossible to understand how it morphs from one form to another without intermediate views. I’ve found that the Israel Design Examiners slavishly follow such circulars whereas I think they should provide guidelines that can be ignored where the essence of the product requires more than two configurations to be shown.

Anyway, this ruling is significant, and correctly does away with profile protection by design, by showing cross-sections that include internal features that are not visible on the installed product, and features that are concealed when the extruded section is installed. Such design registration was well-established but was somewhat dodgy. It’s become more difficult.

By way of comparison, this link relates to a decision for window seals that illustrates the former practice of the Patent Office. Clearly, things have changed.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

w

Connecting to %s

%d bloggers like this: