A Frenelum Spreader for the Tongue Tied Design Attorney

This ruling is an Appeal to the Deputy Commissioner concerning the registerability of Design number 60851 in class 24-02 which covers medical devices.

The application was submitted on 3 September 2017 by Bam Medical ltd and claims priority from US 29/595,949, which was submitted on 3 March 2017. The US application is titled Frenelum Spreader and is an apparatus for spreading tissues. The apparatus includes a sheath member including an open end, a closed end, and a barrel extending between the open end and the closed end; and at least one flap-tip for engaging with tissues, wherein the at least one flap-tip is attached to the sheath member, each flap-tip projecting from the sheath member, wherein the at least one flap-tip is moved in response to movement of the sheath member.

tongue tiedFor those anatomically challenged, although the frenulum generally refers to the elastic band of tissue under the glans penis that connects the foreskin (prepuce) to the vernal mucosa, and helps contract the foreskin over the glans (in uncircumcised males), the frenelum here relates to the anchoring tissue of the tongue, and the device in question is for exercising the oral frenelum after surgical treatment of the condition known as being tongue-tied.

antiquated rightIn the Examination report of 26 February 2018, the Examiner cited applicant’s patent application US 2016/0302809 which published on 20 October 2016, and argued that the applied for design lacked novelty and was not registerable under Section 30(1) of the Patent and Design Ordinance 1924.

In response, the Applicant argued that there are three significant design features that differed between the article shown in the patent illustrations and the requested for design registration.

The Examiner rejected this, arguing that the similarity outweighed the differences and that the articles appeared to be the same. The Applicant appealed this conclusion on 15 April 2019 and a hearing was scheduled for 26 June 2019.

The Relevant Law

The Applicant submits that the refusal and the hearing should be conducted in accordance with the Israel Design Law 2017. However, since the Application was submitted on 2 September 2016, the new law which came into effect only on 7 August 2018, does not apply (see sections 113 and 129(a) thereof.

Thus the hearing takes place under the Patent and Design Law of 1925.

The Effect of Registration of the Design in Other Jurisdictions

common core standardsDuring the hearing, the Applicant claimed that despite the alleged prior publication, the design was successfully registered in a number of jurisdictions including the United States, Canada, South Korea, India and Australia. He claimed that one can learn from this that the Examiners were convinced that the design had novelty despite the earlier publication which they were aware of. Furthermore, the Applicant claimed that the various foreign examiners fairly applying the eye test and so their findings are relevant to the issue of novelty of the design.

eye testThe Deputy Commissioner Ms Jacqueline Bracha ruled that one could not conclude anything about the correct application of the eye test from the fact that other jurisdictions had allowed registrations, although sometimes the standard is similar. The registration has territorial validity and each jurisdiction makes its own determinations. However one cannot ignore the possibility that the Examiner erred in exerting his discretion, or, even if he acted correctly, each examiner follows local case-law. Thus the Deputy Commissioner ruled that one cannot give the conclusions of foreign examiners the weight that the Applicant desires to give them.

The Effect of Common Ownership of the Application and of the Earlier Published Design

The Applicant’s representative claimed that the fact that the earlier publication was by the applicant means that it could not mislead the public and so it should not be considered as an earlier publication. To strengthen this [somewhat curious – MF] claim, the applicant referred to Section 4(1)(v) of the Guidelines for Examining Designs version III from 27 April 2014 which states that:

The question of novelty is considered by the ‘eye test’ and the following guidelines indicate how the eye test should by conducted in accordance with case-law:
5. Where there is a similarity between the articles, but they are not identical, the question to be considered is whether the relevant user would be confused between the two articles.

Firstly, it is clear that the test is not whether the consumer would be confused regarding the source of goods which is the ‘likelihood of confusion’ for trademarks, rather the question is whether the consumer would be confused between the two articles and consider one not protected as being protected.

Accepting the Applicant’s claim would lead to the wrong impression that the Applicant of a design could re-register an active design and thereby extend the protection indefinitely.

It has already been ruled that the identity of the owners of the previously published design does not affect the eye test:

…Is the owner of a design protected against his own prior publications or publications he has authorized? The answer to this question is no. There is no difference between an owner’s publication and that of a third party; both may be novelty destroying.  (Paragraph 10 of 28206/7 Dafa Arieli, 2 August 1999).

A similar claim was raised before then Commissioner Asa Kling regarding the registration of design application no. 55966 to Capbrah Holdings from 23 November 2016 and this was also rejected:

I note that the Applicant claimed before me that we are concerned with different generations that continue a particular design line and so should be lenient or at least, less strict. (page 4 line 26 of the protocol). This is irrelevant to the issue. In all cases the examination should be done objectively in each field, based on the design freedom that exists in that field. One cannot allow “leniences” as claimed by the Applicant, that allow continued registration to keep a monopolistic situation continuing beyond that intended by the legislators as detailed in the Ordinance.

Applying the eye test

The Applicant points to three differences that are claimed to be significant to the consumer who purchases the article and these are intended to provide novelty to the design under the “eye test”. The Applicant considers that these differences are clearly determined, and are roughness on both sides of the tongue, indicated with א and ב, and a hole in the rear end, indicated with a C, as shown in the Figures.

Requested Design Earlier publication
Design 1 Design 2

The Applicant claims that these differences are significant to the relevant consumer, who is neither a casual observer nor an expert.

The Applicant explains that the article is intended to engage the parent’s finger and to massage the tissue under the tongue (the massaging being accomplished by the two rough tabs indicated with the letter ב after a surgical operation to relieve tongue-tie in babies. The purpose of the massage is to prevent the tissue from reassuming its state prior to the surgery. The Applicant claims that the functionality of the design defines the general shape and size and so the design freedom is minimal, thus the amount of product differentiation required to provide sufficient novelty is relatively small. In this regard, the Applicant refers to Section 4(1)(d) of the Appendix C of the Guidelines for Examiners from 27 April 2014.

He requirement for novelty is stated in Section 30(1) of the Ordinance which states that:

If a person submits his application on the appropriate form, in the format required and claims that his is the owner of the new or original design that was not previously published in Israel, the Commissioner has the discretion to register the design under this Section.

The Ordinance conditions registration on one of two grounds: novelty and originality (see Appeal 3406/96 Sela Food Products vs. Ackerstein Industries ltd (11 March 1999).

As ruled in re Sela, Novelty is the requirement for a design to have a shape, pattern or decoration that is not known, and this must attract the eye of the consumer in a manner that affects his choice. (see Appeal 7125/98 Mipromail Industries of Jerusalem vs. Klil Industries ltd. p.d. 57(3) 702).

The nature of the novelty requirement is that the requested design should not have been published in Israel prior to the relevant date, and as stated by then Commissioner Noam in Circular M.N. 69 from 24 December 2008, publications on the Internet that are accessible from Israel are considered prior publications:

One can cite against novelty of a design, inter alia, designs that are published on the Internet prior to the Application date, if there is evidence of when they were published.

In this instance, there is no doubt that the cited art predates the application date.

The decision on whether the requested design fulfils the novelty requirement with regards to the prior art is done by the “eye test” –  which was ruled in Klil to be the eye of the relevant consumer.

As a rule, the potential consumer whose eye is considering the product is the ‘average consumer’ or the ‘reasonable consumer’who purchases the product without devoting a lot of time to consider in depth, and without comparing other products on the market (See Appeal 10340/97 Iruit Marketing, Import and Export 1993 ltd. vs. Yair (7). With this, one can consider that in some cases, the nature of the design will be based on an ‘expert’, who would be the average practitioner of Section 5 of the Patent Law 1967.

The way to compare designs is given in re Klil paragraph 10 by Judge Rivlin:

The correct comparison needs to be made between the general appearance of the object as it appears to the relevant consumer. The emphasis is on the general appearance of the object where the assumption is that the consumer is less observant to small differences than the expert, but is less blasé than the passerby (See Civil Appeal 1187/94 Sela Concrete Products ltd.. vs. Ackerstein ltd, page 291).

The comparison is made between those elements that attract attention as explained regarding the Request to register design application numbers  49080, 49082, 49287 49287, 49310 to Victualic Company, 12 July 2012:

It is an established rule that the comparison be made between the articles in their entirety , but it concentrates on the eye-catching features, where the functional elements are not brought into consideration. Thus the similarity of the functional elements is not detrimental and the the difference between them does not help. (See Russell-Clarke and Howe on Industrial Designs, 8th Ed., p. 146 (2010)).

With the general rule mentioned above, one should consider whether the differences between the goods are minor, since the novelty should be significant, within the limitations of the article, and the knowledge in the fireld, See (Russell-Clarke page 148-149 and Appeal 3406/96 Sela Concrete Products ltd. vs.. Ackerstein ltd, page 291).

The general rules mentioned teaches that one should consider the article in its entirety since that is how the user considers it, but should pay particular attention to eye-catching features.

The Applicant claims that the differences are design elements that do not have functional significance. The differences in question are a hole at the base and and rough pads on the two tabs. The office indication indicates that the Examiner concurs that these elements do not serve a functional purpose.

The purpose of the object of manufacture is to preserve the purpose of the tongue-tie freeing procedure. This purpose is achieved by massaging the tissue under the tongue to prevent it from developing into an anchor that connects the tongue to the lower jaw. Thus the important elements are the slot between the two tabs and the shape that enables the device to engage an adult finger. In light of the above, the Deputy Commissioner accepts that the features in question are design elements.

Having ruled that the three differences are design features, the question remains whether they are sufficient to impart novelty to the device, when it is compared to the earlier published device. The general rule is that the difference should be notable and, and minor differences are insufficient to provide a new design as required by the Ordinance (see Klil page 716). Significant differences are those that the relevant consumer will note when purchasing the article and which will help differentiate between an article and its competitor (in this case, the earlier published variant). In this instance, the consumer is the parent of an infant who has undergone tongue tie surgery. The Deputy Commissioner considers that this consumer will differentiate between the two articles.

Furthermore, one should note that in areas where there is limited design freedom, one can rely on minor changes, as explained in Klil paragraph 13 by Judge Rivlin:

With this, in some areas, the requirement for novelty or originality will be provided by small additions and changes. These may be limited by the inherent lack of freedom of design in the article due to its nature, purpose or usage., or in fields where there become rapidly populated by designs – in such cases small changes are sufficient to provide novelty. *See Appeal 3406/96 above). In such fields, there is relatively little freedom of design, and registration gives minimal protection.

The unique functionality of the article obliges its design within dimensions and specific lines. This specfies the tubular nature and its diameter, which are a function of needing to be slipped over an adult forefinger. Similarly the slot and tabs are functional requirements. The edges are rounded to prevent damage to the baby’s oral cavity during massage, and these requirements limit the design flexibility.

But this comes with an inbuilt disadvantage. The relatively small differences that enable registration limit the scope of protection. Without the benefit of the earlier publication, the applicant cannot claim that someone manufacturing an object identical to that shown in the earlier US publication is infringing his design.

In conclusion Deputy Commissioner Brachah allows Israel Design Application Number 60851 to be registered.

Ruling of 27 August 2019 concerning design number 60851, titled Frenelum Spreader.


Categories: design, designs, Intellectual Property, Israel Patent Office Rulings, עיצוב, קניין רוחני, קנין רוחני

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