Appeal Regarding Infanti Baby Seats Virtually identical to those of Fisher Price (Mattel)

September 19, 2017

fisher price swing seatBaby swing-seats that were made in China and are identical to Fisher Price swing seats, down to the image of a lion on the upholstery, were imported and sold in Israel under the brand Infanti. Fisher Price obtained an Anton Pillar injunction and seized 1830 seats from the Importers’ warehouse. However, the Nazareth District Court rejected all attempts to obtain compensation under copyright infringement of the lion design printed on the seat upholstery and in the instruction manual, trademark infringement for the Fisher Price logo shown in the illustrations of the instruction manual, the trade tort of Passing Off, and the catch-all Law Of Unjust Enrichment following A.Sh.I.R. The case was then referred to the High Court.

This ruling by a panel of Israel High Court judges considers whether copyright subsists for a product design or artwork printed on a product where no design was registered for the product and whether there are grounds for sanctions under the trade-law of Passing Off or under the Law of Unjust Enrichment. The legal advisor to the government filed an amicus brief clarifying the position of the government in such issues.

judge elyakim rubinstenThe main ruling was given by Vice President of the High Court, Judge Elyakim Rubinstein who first considered the basic relationship between design law and copyright. Then, he ruled whether part of something that could have been registered as a design is entitled to copyright protection, and if so, whether the lion character is copyright protected even if the swing chair could have been registered as a design. Are the respondents direct or indirect infringers of the Appellant’s copyright? Do they have the defense of being unaware? Does trademark infringement require intent? And finally is there Passing Off or Unjust Enrichment?

Essentially Judge Rubinstein and Fogelman found copyright infringement due to the lion character on the upholstery, and Judge Meltzer also found that there was passing off, due to the products being virtually identical. Judges Rubinstein and Fogelman rejected the claims of passing off since although Fisher Price clearly had a reputation, they did not necessarily have a reputation for the baby swing seat. Infanti’s copies, though virtually identical to those of Fisher Price, were packaged in different boxes and the boxes were clearly labelled Infanti. The product itself was also labeled with the Infanti brand.

The main ruling is given below, followed by additional comments by Judges Fogelman and Meltzer. Since this is an important ruling, I have translated it in full. At the end are some comments and criticisms.

Background

This is an appeal against ruling 39534-02-15 by Nazareth district Court judge, Ben Chamo which was given on 8 January 2015 and in which Fisher Price lost their claim regarding copyright infringement in a child’s swing seat.

The ruling addresses the relationship between copyright and registered design rights. Judge Rubinstein notes that in the modern consumer society, the design of consumer goods has an increasing importance, and that manufacturers invest heavily  Consequently, many goods are some combination of functionality and artistic expression which makes it difficult to classify such goods in a single IP category and raises difficult legal questions. This appeal relates to a list of such questions of which the relationship between design law and copyright is central.

The Appellant, Mattel Inc. is a US Company that owns Fisher Price which makes baby goods, etc. The Respondent, Dvaron Import-Export Co. Ltd, is a company that imports various baby products into Israel. They and their directors and share holders were sued.

infantiMattel / Fisher-Price learned through Sakal which imports their products into Israel, that the respondents have been distributing a baby swing seat manufactured in China and branded as Infanti, which is a copy of the Fisher-Price swing seat.  Read the rest of this entry »


Getting a Handle on Israel Design Registration

March 26, 2017

Furnipart

Although there is a proposed Law in the works, in Israel, design registration follows the somewhat archaic Patent and Design Ordinance 1924 inherited from the British Mandate. Formally, only local novelty is required! In a Circular, Previous Commissioner Dr Meir Noam creatively interpreted the Law such that Internet publication in official Patent Office websites that are acceptable in Israel would be considered as published in Israel. As discussed in this blog, that Circular is arguably ultra-vires in that such a determination arguably requires at least Ministry of Justice regulations if not a change in the Law. The present ruling by Outgoing Commissioner Kling relates to this Circular.

This ruling concerns seven design registrations – 55598 to 55604 – all of which were titled ‘Handle’ and were filed on 20 May 2014 in class 08-06 for handles and hinges by Furnipart.

On 22 March 2015, the Applicant received an Office Action that alleged that the design were lacking in the novelty and originality required by Section 30(1) of the Patent and Design Ordinance 1924 since the designs were identical to those registered in the name of the Applicant in Europe which were registered and published prior to submission of the Applications in Israel.

In addition to the 55602 registration that was submitted to the EPO on 18 October 2013 and which published on 15 November 2014, all the applications were submitted on 21 February 2014 and published on 26 March 2014.

The Applicant failed to respond to the Office Actions in the period specified in Regulation 28 of the Design Regulations, and on 23 June 2015, a reminder was sent warning the Applicant that failure to respond within 30 days with a request for a retroactive extension would lead to the applications being considered abandoned.

On 10 August 2015, the Applicant sent a response in which he claimed that the designs were, indeed registered in Europe, but apart from the publication on the EPO website, there was no publication in Israel. The Applicant claimed that the Israel Application was filed within the six month time frame of the European filings which is within the grace period from the first filing (Denmark) given in Section 52a(1) of the Ordinance.  Consequently, the European filing date should be considered the effective filing date in Israel.

On 13 August 2005, the Applicant was sent a notice that stated that further examination required payment of the extension fee, and which referenced Circular M.N. 69 from 25 December 2008 and to Section 53(2) of the Ordinance, noting that the Applications did not, claim priority.

On 9 September 2015, the Applicant was sent a second Office Action clarifying that under Circular M.N. 69, an Internet publication is considered as a publication that is published in Israel and so the Applications are contrary to Section 30(1) of the Ordinance. Similarly, it was noted that priority was not requested within two months of submission as required by Section 52(2) and so the effective filing date was the actual filing date in Israel.

On 15 December 2015 in light of the rejection of 9 September, the Applicant requested a hearing and this was geld on 18 April 2016.

Prior to the hearing, the Applicant submitted his main pleadings on 11 April 2016., during which he reiterated the above claims. He also alleged that Circular M.N. 69 differentiates between official and commercial publications and the European Patent Office publication was not meant to be published in Israel, even if it is accessible on line from Israel since the Israel design is not in force. Based on this ‘logic’, the Applicant claims that he is within the requirements of Section 52(a)1 of the Ordinance since there is a six month’s grace period.

 The Ruling

Section 30(1) of the Ordinance states:

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.

So registration is contingent on no prior publication in Israel.

In Section 6 of Circular M.N. 69 from 24 December 2008, the previous Commissioner ruled that :

One can cite designs that have published on the Internet before the filing date in Israel, since there is evidence of their publication date.

To cite something against novelty of a design, section 7 of M.N. 69 relates explicitly to publications in patent offices abroad.

Use of Internet publications shall be done with the required care and only where the Examiner considers that he can rely on it indeed having published prior to the Israel filing date. For example, publication in databases in the official European patent office website OHIM, the USPTO and WIPO, etc. which publish the publication date of each design.

As far as relying on Internet publication, Examiners have been warned to cite these with due care – see the 51593 and 51594 Tequila Cuervo ruling from 9 June 2013, particularly paragraphs 44 and 45, and the ruling concerning various designs to Naot Shoes (1994) ltd published on 1 June 2016 

The same required care regarding the publication date, content and likelihood of Israel based surfers seeing the publication was considered in paragraph 10 of the 45452 Sejec Vanja ruling published on 28 February 2012: 

The language of Section 30(1) of the Ordinance states ‘… not having published earlier in Israel. This does not require that anyone has actually seen the publication…such was always the interpretation, even prior to the Internet age. The question is whether the publication was accessible. See for example the Appeal 430/67 Sharnoa ltd. et al. vs. Tnuva et al. (1968):

“The law regarding prior publication in a book of this type is based on the book being found in a place accessible to the public, such as a public library is considered sufficient publication, since one can assume that in this manner, the design reaches the public knowledge”.

In light of the above, one cannot accept the Applicant’s allegation that the previous publications are not novelty destroying, since reason that Patent Office Internet accessible databases are considered publications is the ease with which one can verify the publication date. This is certainly the case where the applicant does not deny the trustworthiness of the site and of the listed publication date, only whether Israelis would have access to inspect there.

Priority Date

The Applicant claims that despite the earlier publications that are novelty destroying for the applied for designs, the effective filing date in Israel should be considered as being the actual filing date in Europe.

Section 52(a) states:

If a design owner submits a request to register a design that has previously been filed by himself or by  his predecessors in title, a request to file in one or more friendly states (henceforth priority), he may request that as far as sections 30(a) and 36 are concerned, that the earliest priority date will be considered the filing date in Israel if all the following conditions are met:
(1) The Israel Application is submitted within six months of the earliest priority; and
(2) A priority request is submitted within two months of filing.

Firstly, it is stressed that contrary to the Applicant’s claims, Section 52 that the priority date is determined with reference to Sections 30(1) and 36, i.e. with respect to novelty and earlier publication. This does not mean that where a priority claim is made, that the Israel application automatically is awarded the priority date.

In this instance, the previous applications were filed on 21 February 2014 and then in Israel on 20 May 2014, i.e. within the six months grace period for which I priority request can be made. However, filing within six months of the prior application is insufficient since the second clause requires that the Applicant makes a priority claim within two months of the Israel filing date.

On 21 October 2014, this two month period for requesting priority in Israel passed, the period for which the application can rely on the filing date of earlier applications with respect to Sections 30(1) and 36 passed without Applicant requesting priority.

The Commissioner does not agree with the Applicant that the mere filing of an Application in the period provided for in clause 1 is sufficient since Section 52 requires both conditions to be fulfilled: filing within six months and making a timely request for recognition of the priority date. These conditions are complimentary – section 52(a) states explicitly that it applies if all the following conditions are met. One condition being fulfilled does not waive the other. So there is consensus that merely filing within six months does not result in priority being recognized.

Since the full requirements were only met a year after the two month deadline, the Applicant is not entitled to the priority date.

In the hearing, the Applicant’s representative noted that section 54 gives the Commissioner the discretionary powers to extend deadlines in the regulations even retroactively. The Commissioner considers that this regulation does not give him the power to extend deadlines in the Ordinance itself, including extending the priority claim.

The Application is rejected and the designs will not register.

Ruling concerning Design Numbers 55598 to 55604 “Handles” by Asa Kling, 21 February 2017.

COMMENT

four candles  The classic 1976 Fork Handles sketch may be found here.


Updated Blender Container May Be Registered as a Design

December 11, 2016

On 26 August 2014, HOMELAND HOUSEWARES, LLC submitted a design application to the Israel Patent Office for a blender container as shown below.

blender

Although the Design Ordinance 1924 only requires local novelty, previous Commissioner Dr Meir Noam interpreted this to include prior art on the internet that is accessible in Israel. In an Office Action of 1 July 2015, the Examiner found a picture of a blender on the Applicant’s website that appeared to preempt the registration and therefore refused the design. The Applicant responded on 23 August 2015 to the effect that the blender on the website was an earlier model. Although both had four vertical ribs, in the earlier model blender as shown on the website, these ribs were protrusions on the inside of the container, that served as baffles, preventing the contents from swirling around and aiding blending, whereas in the applied for design the vertical ribs were on the inside and outside. Noting that to remove the container required inverting it and therefore arguing that uses would grip the top (the base when inverted) and not the protruding ribs, these ribs were aesthetic, non-functional elements, and by virtue thereof, the design was registerable.

The Applicant submitted an affidavit that stated:

7. The presence of external ribs changes the overall appearance and impression of the vessel significantly. The cross-section of the ribs is triangular in shape and the vertex of the external ribs is pointing outside. As such, users can see four external ribs that are very sharp. In contrast, users can only see the base of the triangular ribs in the prior art because the internal ribs are pointing inward. …

8. The presence of the external ribs also creates lighting effects that improve the appearance of the vessel. The vessel is made of plastic so that it is partially reflective and partially translucent. …”

“9. The presence of external ribs is mainly for aesthetic reasons. While internal ribs promote communication and disintegration of food contents, the external ribs do not interact with the food content and do not have any effect on the blending and mixing quality of the blender. The external ribs do not significantly help users to open or close the vessel with the blade base. … when users want to open the vessel and remove the blade base, they have to invert the vessel otherwise the food contents will spill. Hence, users will apply force to the blade base to rotate the blade base off of the vessel.”

“10. … The field of mixing vessels is regarded as very crowded. Vessels that have internal ribs are very common. …
11. However, I am not aware of any prior art blender vessel that has ribs on the external surface. Since the field of mixing vessels is crowded, it is my opinion that having external ribs on the surface is a very significant alternation of the appearance of mixing vessels. …”

The Commissioner Asa Kling, reiterated that any original or new design could be registered in Israel, and the term design is includes outlines, shapes or decorations of industrial objects of manufacture that are readily visible to consumers who need not be experts but are not simply passers-by (sections 1 and 2 of the ordinance, and 1187/94 Sela vs Ackerstein LTD [8] 291. 

With reference to the 22424, 22433, 22783 and 23767 Klil ruling from 1997, in crowded fields, one does not analyze an object into its elements, but considers it as a whole, see also 31007 Thermo-gumi vs Agmon Plastics and Rubber Industry, 4 April 2011.

With regards to designs on the Internet accessible from Israel, these are prior art under the ordinance as interpreted, see Design 51593 and 51594 Tequila Cuervo S.A. DE. and the Teva Naot case, and further ruled that previous decisions that required care when considering Internet publications not in patent office databases, required care regarding the date of posting, but were prior art in all regards. He accepted the Applicant’s contention that the external ribs were an aesthetic and non-functional modification, and allowed the application, returning it to the design department for registration.

 


Bifurcation in the Interest of Efficiency

November 1, 2016

bifurcatedIn Germany, the courts that rule on patent infringement are not authorized to rule on validity. This makes Germany a preferred litigation jurisdiction for bringing European IP cases. Israeli courts can and do rule on validity of patents and designs in infringement cases. Usually having one court review everything is more efficient, however, this is not always the case.

52245Israel Design Application Number 52245 to My Bondi Ltd. was filed on 23 February 2012 and issued on 23 July 2014. The design is for a multipurpose holder as shown.

In May 2015, My Bondi sued Urban Cofix Ltd and Tabor Publicity Ltd in the Rishon le Zion Magistrates Court claiming infringement of the design. The case is 42290-05-16.

In response, Tabor Publicity Ltd filed a cancellation proceeding against the allegedly infringed design, claiming that it had published prior to the design registration application being filed.

My Bondi have asked for the cancellation proceeding to be stayed until the Rishon le Zion court rules on infringement. They claim that the court will consider additional claims including that of validity, so staying that proceeding will cause a miscarriage in justice.

Tabor Publicity Ltd object to staying the cancellation proceeding. They claim to have already asked the court to stay the infringement ruling until the patent office determines validity of the design registration. They note that in the statement of defence submitted to the court they noted that they would be challenging the validity of the design registration and that the magistrate’s court lacked juridical competence to rule on validity issues. They do not consider that having the Israel Patent Office consider validity will result in a miscarriage of justice since the validity of the allegedly infringed design is a preliminary issue that should be dealt with first.

In the meantime, on 16 August 2015, the Rishon le Zion magistrate’s court transferred the case to the Central District Court as the correct court for ruling on design infringement, but this happened without considering the staying request.

RULING

The bone of contention in the proceeding before the Commissioner of Patents, Designs and Trademarks relates to advertising the product on the Facebook page of the Applicant prior to the registration application being filed. The alleged infringer claims that this advertisement shows the point of novelty thereby destroying the novelty at the time of filing which is a necessary condition for registration.

From their Counter Statement requesting suspension pending the court ruling, the design owner does not deny the publication but claims that the publication was a genuine mistake.

The purpose of suspending a proceeding is “to prevent overly burdening the opposing party and to prevent unnecessary problems for the courts”. See Appeal 8/78 El Okvi vs. Israel Lands Authority, p.d. 29 (2) 477. 483.

In this instance the parties agree that the question of the validity of the mark in the light of the prior publication is the legal issue common to the two proceedings. Clearly the District Court has additional issues to consider, such as unjust enrichment and passing off, etc. which are beyond the legal competence of the Commissioner of Patents to address.

The range of issues before the District Court is wide, and will take longer than merely ruling on the validity of the design registration. The second defendant is a registered third-party to the validity issue. However, the issue before the Patent Office is a focussed one that relates only to the validity issue in light of prior art that all parties acknowledge the publication of.

The main case was transferred to the District Court which has not considered the case at all. Furthermore, in their statement for the defence, Tabor Publicity raised the validity issue and noted that it would approach the Patent Office for a ruling on that issue. Consequently, the Deputy Commissioner rules that it is more efficient for him to rule on the validity issue as per the 1925 Design Regulations which gives the Requester for Cancellation a number of weeks to provide evidence and the design owner a further month.

In conclusion, the cancellation request is allowed to continue and the parties are forewarned that attempts to extend the proceedings before the Patent Office will be considered in light of the progress of the case before the District Court to prevent unnecessary delays.

Cancellation Request Re Israel Design No. 52245 Interim Ruling by Ms Jacqueline Bracha, 11 September 2016

COMMENT

Design litigation does indeed go directly to the District Court, and is appealed to the Supreme Court. The patent office has vastly more experience than any District Court judge in ruling on whether internet publications are prior art. Whether the publication was intentional or not is irrelevant.

 

 

 


Israel Patent Office Rules Costs for ‘Unnecessary’ Design Cancellation Proceeding

September 11, 2016

costs-awardThere are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled. Silver Hong Kong Israel further alleged that Alubin hid the court proceedings from them and made it difficult for them to obtain details of the proceedings before the courts.

Alubin countered that the invoices were made out to a different company, VeMetal ltd., and there was no indication of a connection between that company and the plaintiff here.

There are very few Israel Patent Office rulings or Israel court rulings relating to designs. However, they do occur.

Israel Design No. 53151 to SHL Alubin ltd relates to a profile. It was submitted for registration on 6 September 2012, and issued on 19 December 2013. On 31 December 2015, it was canceled following a Court Order obtained by Silver Hong Kong Israel, who then requested real and actual costs to be awarded.

Silver Hong Kong Israel filed for cancellation on 10 August 2014. SHL Alubin ltd denied all charges. In parallel to the cancellation procedure, a complaint was filed with the Haifa District Court – Civil Matter 21470-03-14 SHL Alubin LTD vs. Exstel LTD.  Before the Israel Patent Office could hear the case, the District Court issued a ruling on 29 December 2015, canceling the mark.

To complete the picture, the design owner SHL Alubin LTD filed a request to hold the court’s ruling, but on 27 January 2015, that request was rejected and the design cancellation was published in the Israel Patent Office journal.

At that stage, a request for costs was filed, for the work done until that time, including filing statements of case, submitting evidence and counter-evidence. To support the request for costs, the Applicant submitted an affidavit from the CEO of Silver Hong Kong Israel ltd., with receipts for official fees and a breakdown of hours per month spent on the project. The breakdown was created for this request for costs, but was not detailed.

Silver Hong Kong Israel ltd. rather oddly claimed to have invoices that they were not submitting for secrecy reasons unless asked to.  On 10 May 2016, Applicant submitted invoices together with a statement from the CEO. The invoices were for consultation from the agent of record for each stage of the proceedings and totaled $35,567.5 (approx. 140,670 Shekels) for 42.5 hours of senior attorney time and 187.5 hours of junior attorney time, and a further 832 Shekels for official fees and 1500 Shekels for incidental expenses, not previously claimed.

Silver Hong Kong Israel ltd. considered the costs appropriate for the stage reached. They claimed that the court filing was forced on them as Alubin threatened to sue them for registered design infringement. However, since Alubin’s claims and designs were indefensible, their behaviour should be sanctioned, and this should be reflected in the costs ruled.

Silver Hong Kong Israel claimed that Alubin had hidden the functional nature of their design when filing the application, and this was what resulted in the design eventually being canceled.

Alubin countered that Silver Hong Kong Israel based their case on the District Court case that they were not a party to. Silver Hong Kong Israel were granted access by the judge and this enabled them to file and prosecute the cancellation proceedings with minimal additional work.  Since the case never went to a hearing, this should be reflected in the costs awarded.  The cost request was a random list of hours and persons without details of the work allegedly done on behalf of Silver Hong Kong Israel, and the total amount of hours claimed was grossly inflated.  The invoices were made out in the name of V Metal ltd., not Silver Hong Kong Israel, and there was no link between the invoices and the work done.

Silver Hong Kong Israel countered this by explaining that V Metal ltd. was a sister company with common owners.

Commissioner Asa Kling noted that Section 46 of the Patent & Design Ordinance 1926 provides that:

In any legal proceeding before the Commissioner under this Ordinance, the Commissioner may rule what he considers to be reasonable costs, can decide which party should pay the costs and how they should be paid.

 [MF – there is an Israel Design Law pending legislation, but until it enters into force, design law is covered by this rather archaic ordinance].

The case-law establishes that the losing party should pay real costs. However, the courts can decide if the actual costs were reasonable, proportional and necessarily incurred in fighting the case, in the specific circumstances. The costs must be proportional to the issue being considered, so that the successful litigant recovers his costs but doesn’t punish the loser. See Bagatz 891/05 Tnuva Cooperative for Marketing Israel Produce vs. the Body Authorized to Grant Import Licenses of the Ministry of Trade & industry, 30 June 2005 paragraph 19.  The various considerations have been weighed up in a long list of patent and trademark rulings by the Israel Patent Office, and are appropriate for design litigation as well.

 

To be awarded real and actual costs, the successful litigator must show that the proof, a breakdown of hours and an agreement for compensating counsel.  Once the successful party provides a detailed costs analysis, the onus is on the losing party to pick holes in the costs request. This is stated in Paragraph 225 of the Tnuva ruling:

Once the detailed request for costs is substantiated – the burden of proof switches and the onus is on the loser to show why the costs are exorbitant, based on their being unreasonable, unnecessary and / or disproportional. 

The claim that Silver Hong Kong Israel could have based their case on the District Court filings was a general allegation and was substantiated in any way. Examination of the submissions to the Israel Patent Office dies imply that a significant amount of real work was performed on behalf of Silver Hong Kong Israel.  The case before the Israel Patent Office has a different statement of case, and evidence to support that statement of case. The court proceeding is not a substitute that can be cut & pasted.  Alubin claims that the costs incurred were unnecessary but there are no concrete examples and the company does not back this claim with evidence.

Alubin considers the whole submission was unnecessary since the case was never heard by the Israel Patent Office. Commisioner Kling rejects this position as  something that Silver Hong Kong Israel could not have predicted and the fact that the case before the Israel Patent Office was never ruled on its merits does not render the filing of the case frivolous or unnecessary.

In light of the above analysis, Silver Hong Kong Israel are entitled to real costs. However, Silver Hong Kong Israel did not originally submit details of the actual costs incurred. There is a difference between the identity of the party to the cancellation proceeding and the entity to which invoices were issued and due to the invoices not being submitted in a timely manner, this was not fully explained. This and the fact that the original request for costs was not detailed, can fairly be taken into account in a costs ruling under Regulation 512b of the Civil Regulations 1984, which allows the courts to consider the parties’ behaviour.

 Taking the above into account, costs of 832 Shekels and legal fees of 80,000 Shekels are awarded to Silver Hong Kong Israel , to be paid within 30 days or the sum will be index linked and interest will be incurred.

Costs re cancellation proceeding for Israel Design No. 53151, Ruling by Asa Kling, 3 August 2016.

 


Publication on the Internet Prior to filing Israel Design Applications

July 26, 2016

Shoe publicity     Shoe publicity 2

Background

This ruling clarifies the extent that apparently pre-filing date publications on the Internet may be used to prevent design registration in Israel.

Although there is draft legislation making its way through the system, in Israel designs are currently protected by the archaic Patent and Design Ordinance of 1924, a legacy from the British Mandate. One of its oddities is that absolute novelty is required and there is no grace period. An even odder oddity is that only absolute local novelty is required and someone bringing a design into Israel for the first time is entitled to register it prior to importing and is entitled to up to 15 years of protection.

The previous Commissioner, Dr Meir Noam, grew tired of waiting for the Knesset and the Ministry of Justice to get their acts together and in a Commissioner of Patents Circular decreed that publication on the Internet, particularly in the design registers of foreign patent offices that are accessible on line from Israel via their websites,  would be considered as available in Israel and novelty destroying. Although arguably ultra vires, the Circular was never challenged. There remains a question as to what other Internet publications are novelty destroying, and the present ruling addresses this issue.

A third oddity is that unlike much of the rest of the world where Examination of designs is only for conformance to formalities, in Israel design applications are substantively examined in terms of novelty and the Examiners may search newspaper press-releases, Applicant’s website and, it transpires, various web-sites offering goods for sale.

This case

Naalei Nayot (1994) LTD submitted several Israel design applications including Application Nos. 55280, 55283,55288, 55289, 55291, 55270, 55271, 55278 and 55279. All these applications were submitted on 26 February 2014 in class 2(04) that covers footwear, socks and stockings.

The applications were submitted together with other design applications that were either registered or were abandoned due to issues raised during the examination process. These nine applications were rejected in a single office action of 17 June 2015 which resulted in the Applicant requesting a hearing that was subsequently held on 18 October 2015.

The nine applications fall into three categories as follows:

  • Applications 55288, 55291, 55270 and 55279 were considered as lacking novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924. These rejections were based on two Facebook advertisements on the Applicant’s Facebook page. These advertisements from 20 February 2014 preceded the application date and appeared to show the shoes.
  • Applications 55280, 55283, 55289, 55291 and 55271 received office actions on 5 February 2012 that alleged a lack of novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924 on the basis of sales illustrations from various advertisements. When the applicant responded to the objection, the Examiner again forwarded a publication on Naalei Nayot’s Facebook page.
  • Application 55278 was rejected on the basis of an advertisement on the Applicant’s website. In this instance, during the hearing, the Applicant withdrew the application and a decision issued on 18 October 2015.

Regarding the other eight applications, the Applicant does not consider the advertisements and the Facebook advert that the Examiner cited as being novelty destroying prior art.

The Applicant argued that advertisements by others are third-party Internet adverts that are not connected to the Applicant and should therefore be considered carefully. The websites are frequently updated marketing sites, and so their trustworthiness is suspect. In particular, the dated consumer comments relating to products, some of which are anonymous, may not have related to the specific products at all!

The Applicant supported their position from a ruling by Deputy Commissioner Jacqueline Bracha concerning design application 51593 and 50594 Tequila Cuervo, S.A. DE C.V. (9 June 2014), to the effect that a publication on a sales website does not necessarily knock out the novelty of a subsequently filed design application. As stated in paragraphs 44 and 45 thereof:

In our case, due to the nature of the website, it is reasonable to accept that the images and prices of goods shown will be updated in response to market changes. Unlike news-like content that is clearly dated or official press-releases and the like, the contents of advertising websites cannot be clearly dated and thus cannot be used to reliably establish a date for information published.

The above should not be understood to imply that only official websites of patent offices around the world have the required standard for the patent office circular (which states that applications for designs submitted in other jurisdictions that are accessible over the internet from Israel are considered as prior art preventing design registration in Israel where, under the current regime from 1924, only local novelty is required – MF) The circular allows other official publications to be relied upon including internet catalogs, and applicant’s websites so long as they enable a clear date to be established. Where the source of the advert is the applicant itself, in a press release or on applicant’s website, the applicant can respond to allegations of prior publication.

The challenge to the Office Action is, therefore, the date and trustworthiness of the advertisement cited by the Examiner as being prior art.

The applicant’s challenge to the Facebook publications cited by the Examiner fall into two categories. The first is that they are not full disclosures in that they do not show the design in full. Applicant submits that the cited publication shows a cupboard or a shoe box and the shoes included are not fully visible. The view is from above and from a distance, and does not teach the design to the extent it is taught in the application itself. The Applicant claims that the Facebook advertisement is not directed to consumers and is inherently different from sales sites that enable to the consumer to select and rotate the image of products displayed. They are inherently different from a catalogue or from a vendor’s website.
A second challenge raised by the Applicant is that the Facebook citations against the second group were first raised in a second office action during reexamination. Thus, with regard to the Facebook citation, we are not concerned so much with the fact of publication as per section 30(1) of the Ordinance, but with the degree of exposure of the design in the advertisements predating the filing date, with respect to their photographic quality.

Publication on General Sales Sites

After examining all the publications in vendors’ websites, the present Commissioner, Asa Kling, declared that the publications are reliable. As to the date of the publication, where this is not included within the advertisement on the website, it is possible to determine this from readers’ feedback which is dated. One can assume that if on a specific date there is a web surfer’s comment on an Internet page regarding a product for sale, that product was on sale at least on the date of the response. The content of the responses leaves no doubt that the products illustrated were those that are under discussion in this ruling.

One has to be careful when relating to Internet publications (see Request for Trademarks 187385 and 187386 (GHI) and the opposition to trademarks 200701 and 200702 (GHI stylized) in Gemology Headquarters International vs. Gemology Institute of America 28 May 2012 (henceforth GHI). In our case, after further consideration of the publications that the Examiner relied upon, it is determined that there is reliable information regarding the publication of the design in the general sales sites. As the inquiry stands up to the warning given earlier with regards to the Tequila case, the burden of proof is on the Applicant to show that the publication relied upon by the Examiner is unreliable and insufficient to serve as prior publication of the requested design.

As stated in GHI, the assumption may be rebutted by an expert opinion of by other means that the publication was not at the time indicated on the site, but the Applicant has failed to bring such proof.

This is similar to citations brought as prior art in patent applications. Of relevance in this regard is the notice from the European Patent Office concerning Internet citation (Official Journal EPO 8-9/2009 (the underlining is by Commissioner Kling):

“Establishing a publication date has two aspects. It must be assessed separately whether a given date is indicated correctly and whether the content in question was indeed made available to the public as of that date. The nature of the internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public – including examiners – to establish precisely what was published and when…. Finally, it is theoretically possible to manipulate the date and content of an internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the internet, it is considered very unlikely that an internet disclosure discovered by an examiner has been manipulated. Consequently, unless there are specific indications to the contrary, the date will be accepted as being correct”.

It is emphasized that as far as the surfers’ comments are concerned, it is evident that the website content was available for a long period, and this is sufficient to remove the novelty of (anticipate) subsequently filed design applications in Israel where there is no reason to assume that a host of readers comments all had their dates changed.

Having ruled that the dates are reliable, there is no dispute that the designs in the Internet website are fully disclosed and this renders the discussion regarding the quality of the Facebook publication moot, as is the question of when the partial publication on Facebook occurred. Thus the website publication of 55271, 55280, 55283 and 55289 is considered sufficient to render the applications unregisterable and the Examiner was correct to refuse them.

Publication on Facebook

There is a further claim that the publication on Facebook was never intended for the consumer. The Commissioner admits that he didn’t understand this claim. The intended recipient of a publication is irrelevant to the fact that there was a publication. The Examiner was correct that the fact the pictures were publicly available is sufficient to destroy the novelty of a subsequently submitted design application. This position is supported by the authors of Russel-Clarke and Howe on Industrial Designs, 8th ed., Sweet & Maxwell (2010), where, on page 13 it is stated:

In general there will be publication if articles to which the design is applied are manufactured, displayed or used in such a way that members of the public will or might see them. It is not necessary that the articles should have been sold. Prior use does not mean use by the public, but use in public as opposed to use in private.

According to the Examiner, the illustrations allow the shoes to be appraised by a visual test, in that the pictures of the featured design may be compared with other designs and what is required is a general appreciation of the design and not all the minor features thereof. The Examiner considered that the Facebook advertisement shows that stylistic elements of all the shoes shown in the illustration in sufficient detail to be novelty destroying.

Section 2 of the Ordinance defines a design as follows:

“Design” does not only mean the outline, shape, example or decoration that makes a mass-produced article distinctive, whether by hand, by machine, by chemical treatment, by a separate shape or an adjoined part, as it appears to the viewer in the finished product, and as can be visually determined. The term design does not include any method or principle or anything else other than a mechanical object.

In Appeal 7125/98 “Miforal Industries Jerusalem vs. Klil Industries LTD 57(3) 702 Nevo 8 May 2003, in paragraph 10 of the ruling this is explained:

The correct comparison needs to be made by comparing the general impression that a design makes on the eye of the relevant consumer. The emphasis is on the general impression from the article considered in its entirety., where the assumption is that the consumer does not have an experts attention to detail, but is also more interested that a passer-by Appeal 1187/94 Sela Concrete Devices LTD vs. Ackerstein Industries LTD [8] 291.

Thus in many fields, a design will be examined in its entirety rather than being analyzed into constituent elements. See  Patent Office ruling concerning designs 22424, 22433, 22783, 23767 Klil Industries LTD of 7 August 1997

By applying the general visual appearance test of the Ordinance as fleshed out in the case-law, the question in our case is whether the normal consumer exposed to a picture in an advertisement on Facebook would be sufficiently impressed by the general appearance that he would identify the shoes for which design applications were filed. The Commissioner considers this unlikely.

The nature of the Facebook advertisement is high-resolution coloured photographs. However, the photos show some of the shoes almost in their entirety and others are only partially visible. The soles of none of the shoes are visible.

As the Applicant noted, viewing the photographs on Facebook is insufficient to give a feel for the whole shoe, since each show is only shown from one specific angle which is a general front birds-eye view. The photos do not show the design elements of each shoe, such as decorative elements in detail. As the Applicant explained, apart from the question of the intention of the advertisement, the publication of the shoes in these advertising photographs is not the same as their display on a website showing all angles.

Furthermore, with respect to the articles under discussion,one cannot deny that the heel of a shoe is a significant design consideration. For many of the shoes shown, the heel is not illustrated, nor is the view from behind, which is of significance to the purchaser as will be detailed hereinbelow.

For example, with reference to design application number 55288,  the Facebook illustration does not show the heel engaging straps of the shoe, but only the front upper section.

With reference to Application Number 55279, the Facebook photograph leaves a difficulty in determining whether the shoe is a high-heeled shoe or a platform shoe. There is also a difficulty in understanding the internal profile of the shoe which is clear from the figures submitted. The show of design application number 55291 is not clear from the Facebook image which does not show clearly if the shoe has a high heel or not, and what the back-of-heel straps look like. These are, however, clear from the images of the application as filed.

Application 55270 is shown on Facebook, but the position of the back-of-heel strap and of other elements such as floral decorations is not clear. Thus it appears that the Facebook images do not reveal the design in its entirety.

Applications 25280, 55283, 55289, 55291 and 55271 are not clearly shown on Facebook.

In conclusion, Application numbers 55288, 55291, 55270 and 55279 were rejected whilst Applications 25280, 55283, 55289, 55291 and 55271 were allowed to be registered, (as noted previously 55278 was abandoned prior to the hearing).

Ruling by Commissioner Kling concerning various shoe design applications submitted by Naalei Nayot, 1 June 2016.

COMMENT

This ruling provides much needed clarification regarding to what extent a design shown in a photograph on an Internet website is novelty destroying. However, I respectfully submit that the commissioner is wrong in this case. (Actually that’s not strictly true. The Commissioner is right by definition. It is only a court ruling that can over-turn his decision. What I mean is that I think that the standard for an image to be novelty destroying should not be the same as for registering a design. A registration should include front, back, left, right, top and bottom plan views, and also a perspective view. I think that an earlier publication of a view that observers see should be adequate to anticipate a design application and to render it non-registerable.

After the Christian Loboton case, I understand that some people choose shoes because they have a particular colour sole and are willing to pay a premium for this. Actually this isn’t true. Some people are willing to pay more for a particular designer’s products, and will accept red soles as a distinguishing trademark. Clearly the arrangement of grips and studs on the soles of sports shoes have a purpose, and whether the ankle is strapped in or not is also of some interest, but, like the height of a heel, it is functional. Women wear high heels to look taller (yes I’ve also seen Kinky Boots and accept that they also cause the buttocks to clench sexily). Essentially heel size is functional. I think that people primarily choose the aesthetic elements of a shoe design based on the impression it provides to someone looking down from in front. It is for precisely this reason that the Facebook adverts show the shoe from this perspective.  A good design will be available for different sports with different grips on the sole and, I suspect, will be available in low, medium and high heel options. Furthermore, whether a shoe has high heels or not is usually visible from a raised front view.

Without viewing the particular images and the specific shoe designs it is difficult to challenge the Commissioner’s ruling, but I am skeptical.  I think that Former Deputy Commissioner Smulevezh was correct in the Ackerstein kerb-stone decision to rule that one views kerb-stones from the top and front and thus a publication not showing the underside and back surfaces is still a publication. I think this should apply to shoes as well; most people wear them on their feet at ground level. They chose shoes to compliment outfits based on what the shoes look like from a bird’s-eye view from the front. This is not a bird’s-eye view at all. It’s the view that others, and indeed the wearer himself / herself see.

I can accept that a purchaser may be interested in what the inside of a shoe looks like, but I do not consider this to be part of the aesthetic design protected by a design registration. Shoes are designed to be worn. When worn on a foot, the inside design features of a shoe are hidden, as is the sole.  I would expect Naalei Naot to complain about competitors making shoes that are otherwise identical except viewed from underneath or when considering the inside. This is why they register designs. An otherwise identical shoe to one that is registered design, that is differentiated by having a tartan lining and a manufacturer’s signature written on the part of the sole connected to the heel that does not get appreciable wear, should, in my opinion, be considered infringing.


The Minimal Requirements for Design Registration in Israel

June 8, 2016

Israel Design Application Number 55635 is for a “Wardrobe Integrated with Roller Shutter” [sic]. From the Hebrew title, I presume “Wardrobe with Integrated Roller Shutter” The Application was filed on 25 May 2014 in class 6(04).

The Figures, reproduced below, were a little primitive and were rejected as the Examiner considered they showed a wardrobe (closet) and a roller blind, but not a specific design for a specific combination of the two. Thus, the Application described a concept and not a specific design for an article for manufacture and thus could not be registered.

wardrobe design

In response, the Applicant responded that the Figures did not show two separate articles, but rather showed a wardrobe with built-in roller blind. Furthermore, the combination was a new article of manufacture that attracted the interest of wardrobe purchasers, resulting in this wardrobe selling better than others [presumably with sliding or hinged doors, but it is a long time since I went wardrobe shopping – MF].

The Examiner was not convinced and argued that the figures were schematic and indicated a concept and not an article of manufacture. For example: the wall thickness is not indicated; the tracks for the roller blind are not shown; it is not clear if the blind rolls upwards or downwards [surely both – MF] and there is no switch or strap for controlling the blind [here the Examiner is presumably drawing an analogy to the roller window blinds that are ubiquitous in Israel and are activated by a strap, usually at the right side of the wardrobe. Here the term roller blind is actually misleading. What generally occurs in wardrobes, cupboards and the like, and is particularly common in kitchens, is that a verneer door is cut into strips that are then mounted onto a backing cloth. The door is thus able to articulate, and is pushed up (or sideways for vertical strips) and along a track that goes under the roof or the cupboard and down the back so that when open, the door fits over and behind the void. That as may be, what is clear is that the Applicant and Examiner are not understanding each other – MF].

The Applicant requested a hearing before the Commissioner, which was scheduled for 3 February 2016.

Prior to the hearing, Applicant submitted a Statement of Case in which he argued that the applied for design is not merely a direct functional result of the intended use and the combination of roller blind and cupboard, and that although combining known elements, was a unique combination of elements never hitherto combined.

The Applicant also noted that he’d obtained a Notice of Allowance in the US for what he considered an identical application.

 

US design

The Applicant and his legal representative (Adv. Yaniv Kehat) attended the hearing armed with the US figure but not the Israel figure, which he considered identical.

The Commissioner considered the US Figures more detailed and clearer, and that they provided wall thicknesses, for example. What was interesting was that the Applicant considered these unnecessary detail and of minor relevance to the appearance of the wardrobe.

The issue, therefore, is what is the minimum detail required to register a de minimis design under the Israel Design Ordinance 1924?

Section 2 of the Ordinance states:

A ‘design’ means the outlines, shape, example or decoration of an article of industrial manufacture, whether by hand, by machine or by chemical action., separate or together with the article, that are clearly perceived by the viewer of the finished article, but does not include a product or building principle or anything that is essentially a mechanical device.

From the above, and as affirmed by the Supreme Court in 7125/98 Micromal Industries Jerusalem vs. Klil Industries, P.D. 57(3) 710-711:

The protection is given for the unique design of an article, as perceived and noticed by the relevant consumer, in such a manner as to influence the choice of purchase.

The end clause of the definition of design in the Ordinance states that a design that defines the functionality of a device cannot be protected as a registered design. the meaning of the term functionality is as defined in Patent Law. There is always a tension between non-protectable functionality and registerable designs, see 430/67 Sharnoah LTD et al. vs. Tnuva Agricultural Cooperative of Israel LTD., P.D. 22(1) 114-116:

A mechanical device whose structure is dictated by usage, may be patent protectable but cannot be registered as a design. The only registration that the Commissioner can give is for a specific design which provides more than that needed for it to perform its function, but the fact that a specific design has functional advantages does not preclude it from being registered.

The functionality of an article does not prevent it being registerable as a design…There are those who say that the most functional design is the most aesthetic, but where a design is totally dictated by the function that the article is to fulfill and it is known that at the time of registration of the design there was no similarly efficient alternative for achieving the desired functionality, it cannot be registered as a design.

The reason is that where other designs for achieving the intended utility exist, one can no-longer claim that the design is totally dictated by function, and there is no mixing of design and patent registration, as someone else can fabricate his article with similar functionality, but a different design that the registration cannot prevent. 

These considerations were used in the 2010 ruling concerning design numbers 44701, 46834 and 46835 to Petia LTD where it was stated:

One should consider whether the entire design is defined by the function. That means whether the design has an aesthetic element or whether the whole design is functional.

Thus the design application should provide the view that attracts customers and should be more than functional. the Examiner should consider whether a finished design is submitted, such that consumers can tell the difference between protected and non-protected designs with similar functionality.

As to the quality of the Drawings – this issue has been discussed with respect to 47337 and 47338 Global Opportunities Investment group (2/8/12) section 14:

The Figures and drawings of a design are the common language between the designer and the consumer who purchases or uses the article and whose eye the examiner is supposed to judge by 7125/98 Micromal Industries Jerusalem vs. Klil Industries, P.D. 57(3) 710-711; 1187/94 Sela vs. Akerstein 5756 (2), page 291. The currently submitted images are not in the form that the consumer can understand. The requirement is different from that of Engineering drawings which provide full details for assembling or constructing an article and are a common language between designer and manufacturer, and require dimensions, details of hidden elements, sections and internal elements which are not part of the design (for registration purposes).  The requirement of the design illustration may be learned from the purpose of the registration and from the relevant case-law: 

The importance of design registration, like all other public registrations, is to provide public information regarding that protected. If the certificate does not clearly show what is protected, this purpose is not achieved (TA (central) 09-06-21130 Oren Yoram Packaging LTD. vs. Scholnick H.Y. LTD et al. 7 Oct 2010 paragraph 21). The figure itself must teach the properties protected by the design. If the figures do not show the main property in primary clear view, it must be concluded that such a design registration does not protect this property – section 22.

The appearance of the design should cover the attributes and aspects of the specific article as the finished good appears. A design will not issue for a figure that covers a range of different articles, as the scholars Russel Clarke and Howe wrote in their book: On Industrial Design (8th ed.), page 122, section 3-080:

“If the application for registration is framed in such a way that what is sought to be registered is not a single appearance (i.e. of shape or pattern), but a range of different appearances, which all embody the general features which are claimed by the applicant, then those features are too general, and amount to a method or principle of construction. In other words, any conception which is so general as to allow several different specific appearances to be made within it, is too broad and will be invalid.”

And from the general to the specific:

From the drawings submitted to the Israel Patent Office one can only see the general lines of the cupboard without design features that emphasize the uniqueness. For example, the figures do not provide the capacity, the wall thicknesses and the design of the roller blind. the top view is not clear – from the front and top there seems to be something there, but from the isometric projection there doesn’t seem to be anything covering the roller. Consequently the design is not clear enough to relate to a specific wardrobe and one could conclude that the figures are schematic for a whole class of wardrobes with different wall thicknesses.

The figures submitted (and allowed) in the US provide this additional information and give an indication of wall thickness and capacity.

At this stage, before substantial examination, I see no reason not to allow the Applicant’s conjecture that there are different ways of combining a roller blind and a wardrobe. Nevertheless, the Israel application should show the unique design feature of the combination, whereas it merely gives the general outline, and, if it were allowed to be registered, would provide protection for the combination without limiting to a specific design.

The design application may therefore be rejected. However, Applicant has requested switching the figures to those (more detailed ones) allowed in the US which are not schematic. This option came up at the hearing, and Regulation 53 allows figures to be corrected or switched if they are procedurally flawed and the amendment does not disadvantage third parties and the Commissioner considers it acceptable. This is allowable so long as the replacement figures are clearly for the same design and do not affect the priority date or require the Examiner to perform additional searching.

In this instance, the differences are minor but important. The US figures are for the same design but provide a design whereas the Israel figures are schematic illustrations of a design concept. The US design is clearly a narrowing of the protection and does not add new matter.

In conclusion, Applicant may replace the Figures on record with those of the US registered design patent within 30 days, or the Examiner’s objections will remain in force.

Ruling concerning Design Israel Application No. 55635 Balas Design LTD, Asa Kling, 20 April 2016

COMMENT

Note, the Commissioner has NOT stated that the replacement figures will be allowable. The obvious problem is that the US accepted the design.

In this instance, the Applicant was confused between a patent which can issue for a unique combination of elements, and a design. That said, a design for a wardrobe is quite interesting due to its simplicity.

Wardrobes are essentially boxes, but they have relative height-to-width-to-depth proportions, albeit typically standard and defined by the function, where the height of the rail should enable dresses or knee-length coats to hand clear, the overall height should fit into a room. The depth should accommodate hangers and is typically about 55 cm. There is generally internal features such as a hanging rail or shelves, however, these can be disclaimed. The width of wardrobes with hinged doors are usually multiples of 40 cm. A rail of longer than 80 cm typically bends too much. The thing about roller blinds or sliding doors is that they can be any width. Sliding doors do not allow unrestricted access as typically there are two doors and when open, half the wardrobe is inaccessible, and the doors can be moved from one side to another. A roller blind is a good solution for a door, in that the entire front may be opened at once, and there are no protruding doors to walk into. Thus roller blind provides additional functionality that other door systems lack.Then again, roller blinds require maintenance and roller mechanisms are inherently less reliable than sliders or hinges.

The Applicant has a valid point regarding wall thicknesses. If the design was granted for something where careful measurement showed that the wall thickness was 20 cm, and someone used 1 inch plywood 2.6 cm to fabricate what is otherwise the same design, I think a judge would see this as copying and the design as infringed. There is, therefore, an interesting de minimis issue of what is required to define a box with a roller blind as a design for a wardrobe.

Why should the inside matter? Come to that, when purchasing a wardrobe, the top (and back views) are rarely of importance. The purchaser does not see the top which is typically above eye level. See the 2009 decision for similar consideration regarding bottom and back surfaces of a kerbstone.

The deficiencies, or otherwise, of the Figures is, in my opinion, of limited interest. The real question is what is required for a design to be considered registerable and not merely functional.

Arguably a roller blind for a wardrobe is an aesthetic feature. I would argue that it is a functional solution for cases where swing doors are inappropriate due to confinement, whilst allowing access and viewing of the entire contents which sliding doors do not accomplish.  (I don’t accept that cupboards with roller blinds have never been thought of. Kitchen cabinets with roller blinds exist and shop display cabinets, particularly for chilled goods, often have a roller mechanism for closing at night. Storage units sometimes have roller blind doors. Thus I would not consider this a patentable invention).

The problem is that wardrobes as objects of manufacture come in a limited range of standard sizes. This is a rectangular box of standard dimensions with a draw blind door. Filing half a dozen variations will prevent competitors. Sure, a carpenter could still make one-off solutions, but this would effectively corner the market for prefabricated wardrobes. I don’t consider wall thickness as being an issue. The design is the same whether the wardrobe is fabricated from plywood, timber or medium density particle board (MDF).

I did a little ‘googling’ and found plenty of websites offering wardrobes with roller blind drawers of different types. Should the ‘mere functionality’ objection be used exclusively for refills and internal spare parts having design requirements that are defined by usage, to prevent manufacturers of cars and the like having a monopoly on spare parts?

This case is of relevance to the smartphone wars in that to a large extent, Apple’s design is minimal and simple, creating an elegance. However, to obtain a large screen in a small device of minimum thickness with rounded corners for protection leaves little options. In Apple vs. Samsung, the European and US courts found differently and whilst cynics will state that the US found in favor of a US company, the case was a difficult one to call.