2016 C L D 1962

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2016 C L D 1962
[Sindh]
Before Sajjad Ali Shah, C.J. and Zulfiqar Ahmad Khan, J
DOLLAR INDUSTRIES PAKISTAN through Authorised Attorney and another--Appellants
Versus
Messrs BROTHERS INDUSTRIES through Partner and another---Respondents
H.C.A. No.212 of 2015, decided on 12th April, 2016.
(a) Registered Designs Ordinance (XLV of 2000)------S. 3(2)----Registrable designs---'Ordinary observer'/'point of novelty'---Tests---Historical
background.
Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944); Litton Systems, Inc. v.
Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) and Egyptian Goddess v. Swisa (543 F3d 665
(Fed. Cir. 2008)) rel.
(b) Registered Designs Ordinance (XLV of 2000)------S. 3(2)--- Registrable designs--- Visual aspect of designs---Relevance---Visual aspects are of
seminal importance, which means that when someone looks at one design and then looks at the
second design, and if he gets confused and it becomes hard for him to make a distinction between
the two designs, then S. 3(2) of Registered Designs Ordinance, 2000 kicks in---For S. 3(2) of
Registered Designs Ordinance, 2000 to be applicable, the complete and overall impression that
stays in the intending purchaser's mind when he looks at the two designs is critical.
(c) Registered Designs Ordinance (XLV of 2000)------S. 3(2)--- Registrable designs--- 'Ordinary observer'/'point of novelty'---Tests---Applicability
and scope---Court, while deciding the cases about the design similarities routinely applies two
tests: firstly, original 'ordinary observer' test and subsequently developed 'point of novelty' test'--In the ordinary observer test, court considers rival designs from the eyes of an ordinary observer,
giving such attention as a purchaser usually gives and then determines whether or not through
those eyes the two designs are substantially the same.
Gorham Co. v. White, 81 U.S. 511, 528 (1871) rel.
(d) Registered Designs Ordinance (XLV of 2000)------S. 3(2)---Patents and Designs Rules, 1933, R. 35(2)---Registrable designs---Determination--Classification of goods---In case two designs are identical, the law will prohibit the one that is
copied or produced later; however, if the same are plainly dissimilar, they can co-exist freely and
happily, because designs are personal choices---Diversity is the natural beauty of life and freedom
to choose from a range of 'plainly dissimilar' designs is the driving force of today's economy--Designs are considered distinct if they have different appearances, even though they are related
articles; for example, two vases having different surface ornamentation creating distinct
appearances are required to be claimed in separate applications, because design protects only the
appearance of an article of manufacture, and it is possible that minimal differences between similar
designs can render each of them resgistrable--- Even change of material to two identical design
makes a difference, that's why there is provided a classification of goods under Patents and Designs
Rules, 1933, and R. 35 (2) thereof requires an applicant to state the class in which the design is to
be registered and the article or articles to which the design is to be applied.
(e) Registered Designs Ordinance (XLV of 2000)------S. 3(2)--- Registrable designs---'Ordinary observer'/'point of novelty'---Tests---Applicability
and scope---'Plainly dissimilar/similar', doctrine of---Applicability---Plaintiff filed suit for
infringement of the registered design of its pen by the defendant, whereas the defendant filed
application before the Registrar of Designs for cancellation of the design of the plaintiff's pen, on
the ground that the plaintiff's design was not original in terms of S. 3(2) of Registered Designs
Ordinance, 2000, as the same was a copy of a prior published German design of a pen called
'Hauser 737 Mayer Rollerball'---Suit was subsequently transferred to the High Court for decision--Single Judge of the High Court, accepting the claim of the defendant, cancelled the registered
design of the plaintiff on the basis of "Hauser Catalog" of the foreign pen and a certificate, holding
that identical design of said foreign brand having been active in the international market since
1995, the plaintiff's design could not have been registered in Pakistan in 2005---Validity---Hauser
95 Catalog did not suggest that the same was for the year 1995, as the title page only said 95--Defendant had to prove that the said publication was of the year 1995 (or any date prior to the date
of filing of the design by the plaintiff) to defeat the newness claim made by the plaintiff under S.
3 (2) of Registered Designs Ordinance, 2000, which onus of proof, unless discharged, could have
been assumed by the Court---Certificate purported to have been issued by "Innowell GmbH"
looked fake, and no German company would issue such an untidy document---No citation of the
term 'Hauser 737 Mayor Rollerball' was available on the internet, which meant that the term was
unknown to the virtual world and one could very safely assume in today's world the such a brand
had never existed---Comparing the design of prior art pen appearing in the Catalog 95 alongside
the design of the plaintiff's pen, there were apparent dissimilarities in the first look---Looking at
the overall visual impressions of both the pens, one would note that the prior art was a roller
ball/ball point, and the plaintiff's pen was soft-liner with a fixed line thickness of 0.3mm, which
were intended to be used by a different class of purchasers looking for pens for different purposes,
which discrepancy set apart the class of divergent users of each pen---Prior art being a roller pen
used heavy pressure of hand and thus could create carbon copies; however, the soft-liner could not
produce any carbon copies---Court also looked at the specific features of both the pens, such as
differences between the nib, the cap, the colours, hardness of the material of the main body and
the overall finish of the rival pens---Applying the 'ordinary observer' test through the eyes of an
observer familiar with pens, High Court concluded that, based on the differences, the plaintiff's
design and the prior art were plainly dissimilar---Differences, existing between the two pens, were
enough to render the rival designs plainly dissimilar, and there was no possibility that an ordinary
observer would be deceived by similarities of the two designs if the pens were available side-byside---Alleged "Hauser 737 Mayor Rollerball" pen was sufficiently distinct and plainly dissimilar
with the plaintiff's pen on account of the existing differences which were clearly noticeable under
the ordinary observer test---Registration acquired in respect of the plaintiff's design under
Registered Designs Ordinance, 2000 was therefore not hit by 3 (2) of the Ordinance on account of
the prior art's plain dissimilarity---Impugned order for the cancellation of the registered design of
the plaintiff was therefore set aside---High Court appeal was allowed.
Gorham Co. v. White, 81 U.S. 511, 528 (1871); Wing Shing Prods (BVI) Co. v. Sunbeam
Prods 665 F. Supp. 2d 357 (2009; Minka Lighting Inc., v. Maxim Lighting International, Inc. No.
3:06-CV-995-K, 2009 WL 691594 (N.d. Tex. Mar. 16, 2009) and Ethicon Endo-Surgery, Inc. v.
Covidien, Inc. (Fed. Cir. Aug. 7, 2015) rel.
Barrister Khalid Jawed Khan and Ms. Sana Akram Minhas for Appellants.
Monawwer Ghani and Abdul Hameed Iqbal for Respondents.
Date of hearing: 16th March, 2016
ORDER
ZULFIQAR AHMAD KHAN, J.---Brief facts of the case are that the appellant, who is a
company engaged in the business of manufacturing, selling and exporting various kinds of
stationery products including pens for the last many years, as the part of securing its intellectual
assets, registered design of a pen under the provisions of the Designs Ordinance, 2000 (hereinafter
referred to as "the Ordinance") bearing design No.12247-D on 09.05.2005 with the Patent Office,
a certified copy whereof was attached as annexure Z-3 which comprised of four sheets of drawings
depicting various features of the said pen. While sheet No.1 show full view of the pen with its cap
secured on the top (thus nib and other interior parts cannot be seen), sheets 2 and 3 show body of
the pen with its cap removed from the top wherefrom it could be seen that the said design
incorporates an array of unified distanced parallel lines starting from the nib-end running to a
reasonable distance (about one-and-a-half inch, or so) all across the periphery. Which array of
lines while appearing aesthetically appealable, also aim to assist proper grip of the pen by the
person using it for writing. This element of the design is reproduced in the following:
Notwithstanding that the said design is registered under the Ordinance, it is also registered
as a trade mark with OHIM (Office for Harmonization in the Internal Market) in respect of the
countries of the European Union as of 06.08.2015.
Respondent, the rival manufacturer of stationery items including pens, sought registration
of its own design under the Ordinance bearing No.13314-D dated 14.03.2007, wherein as per the
drawings submitted with the Patent Office, all the essential elements of the respondent's said design
are restricted to the exterior of the pen since all the drawings show pen having its cap screwed on,
thus it could not be seen what design embodiments of the said pen are hiding underneath the cap.
The appellant claims that soon after the registration of design of its pen on 09.05.2005, it
commenced manufacturing, sale and export of identical pens, however, sometime around October
2008, pens manufactured by the rival respondent started showing up in the local market, wherein
while the exterior of the pen resembled with the registered design No.13314-D, however, when
the cap was removed, pen of the respondent had the identical design element comprising of the
feature of parallel lines specifically protected by the appellant vide their design registration
No.12247-D. A picture of the rival parties pens with cap are reproduced in the following:
Appellant's pen with
cap
Respondent's pen with cap
Pictures of the appellant and respondent's pen (without cap) are reproduced in the
following:
Appellant's pen without
cap
Respondent's pen without
cap
Being aggrieved of the said act of the respondent, the appellant filed Suit No.1398/2008
and Suit No.1405/2008 in this Court, alleging infringement of their aforesaid registered design,
wherein by orders dated 09.10.2008 and 11.10.2008, the learned Single Judge was pleased to
restrain the respondent from manufacturing and selling the products allegedly infringing the
registered design rights of the appellant.
Having come to know that the respondent had obtained registration of the said design
(which, after removing the cap, appears identical with the appellant's pen), the appellant on
18.10.2008 filed an application before the Registrar of Designs for the cancellation of the
respondent's registered design No.13314-D, which proceedings were subsequently transferred
from the Registrar of Designs office to this Court, since the suit for infringement was proceeding
before this Court.
The counsel for the appellant submits that as a counterblast, respondent instituted JM
No.41/2008 against the appellant under section 10 of the Ordinance, seeking cancellation of the
appellant's registered design No.12247-D, on the basis that the appellant's design is:
(i)
not original and new, as required under section 3(2) of the Ordinance; and
(ii)
a copy of a prior published German design for a pen known to the world as "Hauser
737 Mayor Rollerball".
The learned counsel contended that the order of the learned Single Judge is entirely based
on the above referred German 'Hauser' 95 Catalogue, in terms of which, the learned Single Judge
reached to the conclusion that there was no originality or newness in the design 12247-D of the
appellant as mandated by subsection (2) of section 3, where for a design to be registered,
international novelty is required. Since allegedly, a design, identical to the design registered by the
appellant in 2005, was already published in a German ('Hauser') catalogue in 1995 and pens of
identical design were sold since 1994 under trade mark "Hauser 737 Mayor Rollerball",
registration of any similar design of pen in Pakistan was barred by the Ordinance, thus petition of
the respondent was allowed and the appellant's registered design 12247-D was cancelled,
whereupon the instant appeal is filed.
Relevant paragraph from the orders of the learned Single Judge is reproduced in the
following:
The publication on which reliance is placed by learned counsel for the petitioner is the
"Hauser" catalog. Additionally, there is the fact that there was an international exhibition
at Frankfurt, Germany in 1998, which was admittedly attended by the representatives of
the contesting respondents. That was also a year (and perhaps the last year) for which,
according to Innowell GmbH, a "Hauser" catalog was published. I start with the catalog as
annexed to the petition. It is quite obvious that this is a copy of the 1995 catalog as was
shown to me at the hearing. Accordingly, the objection taken by learned counsel for the
contesting respondents that the catalog cannot be taken into consideration cannot be
accepted. The catalog clearly shows the "Hauser 737 Mayor Rollerball" pen, giving not
merely its description but, much more importantly, also its photographs. As is well known,
in design law the visual aspect is of seminal importance. In this regard, reference may be
made to the definition of "design" as given in section 2(c) of the Ordinance. The "Hauser
737" is shown in at least two different places in the catalog, at page 8 and page 20. Even
as appearing in the catalog, it appears to me to be, if I may be allowed the use of a
colloquialism, a "dead ringer" for the Design as registered. Now, the "Hauser" catalog was
clearly a trade catalog, which was intended to be circulated amongst customers and be
freely available in and to the trade. As noted above, the contesting respondents claim to
have been in the stationery business since 1954 and, on their own showing, appear to be a
major Pakistani entity in this sector. Reference may be made to paras 3 to 6 of the counter
affidavit. It is only to be expected that the representatives of such a business would keep
themselves abreast of developments and visit trade fairs and exhibitions for business
purposes. As noted, it is admitted that they attended the 1998 exhibition in Frankfurt and
it can be safely assumed that this was not the only time that they have attended such fairs.
Indeed, the Frankfurt exhibition, or "Paperworld", appears to be a major annual
international trade fair for paper, office supplies and stationery products, as a simple
Google search reveals. It is only to be expected that the "Hauser" brand, itself of admittedly
German origin, would be, and have, a major presence at such an international event. One
can usefully compare the facts before me with the situation in the Magmatic case. There,
the facts were perhaps much more conducive to the Court concluding that the "safeguard
clause" ought to apply, but the High Court reached the contrary conclusion. Thus, even if
section 3(2) were to be given a more nuanced reading (which is, I emphasize, a point that
remains open) the present facts and circumstances would be well within the meaning of
publication anywhere in the world. On a more literal reading, they readily pass muster.
Keeping all of the foregoing factors in mind, I have no hesitation in holding that the
contesting respondents' Design is the same as, and (in any case) certainly does not at all
"significantly differ" from, the design of the "Hauser 737 Mayor Rollerball". I further hold
that the design as registered by the contesting respondents was published much prior to
2005 within the meaning of section 3(2) and therefore the design is neither new or original
and ought not to have been registered. [Emphasis supplied]
Leveling his line of arguments against the above highlighted conclusion of the learned
Single Judge, the counsel for the appellant submitted that the said Hauser catalogue did not
mention date of publication, as well as, the certificate produced by the respondent in support of its
claim that the Hauser 737 Mayor Rollerball branded identical pens were made available since 1994
by a company called Innowell of GmbH of Germany is also fake. Further, the counsel contended
that the specimen of the pen presented before the learned single Judge as a Hauser pen was locally
produced for the purposes of this case and was not even made in Germany.
Levelling rival claims, the counsel for the respondent reiterated arguments that the
appellant's deign was a copy of the German Hauser 737 Mayor Rollerball pen published in the
Hauser 1995 Catalogue, thus its cancellation was rightly ordered by the learned Single Judge on
account of design's failure to pass through the test of global novelty and newness prescribed under
section 3(2) of the Ordinance.
Heard the counsel and having perused the records, while we fully agree with the legal
rationale of the learned Single Judge that once a publication has been made prior to the date of
filing of a design in Pakistan and goods of the similar designs have been offered for sale anywhere
in the world, there is no novelty in the identical design and such a design cannot be registered in
Pakistan under the Designs Ordinance.
However, the test would be going deep into the rival claim that the catalogue was
engineered and the numeral 95 mentioned thereon did not mean that it was 1995 - the year of
publication of the said catalogue. Also, we would like to look at the claim that Hauser has stopped
manufacturing and selling pens; and what is its relation with Innovell GmbH to determine
genuineness of the certificate produced by the respondent. Last but not least, the design of the pen
presented in the court as allegedly manufactured in Germany by Hauser in the year 1994, does it
carry the standard of quality for goods manufactured in Germany. Notwithstanding therewith, of
prime importance, would be the examination of criteria used by courts to reach to conclusion as to
the circumstances in which a design infringes on a past design (commonly known as prior art)
thereby, in our case, forming an obstacle for the registration of a subsequent design in terms of
section 3(2) of the Ordinance. We will analyze these details in the following:
1. Trade Mark Hauser
a.
From the German Trade Mark Database it appears that the trade mark HAUSER
PEN was filed by A. Hauser GmbH and Co. KG, Germany on 15.10.1993, however upon
expiry on 14.10.2003, the mark was not renewed and its files were destroyed, as per the
records available on-line.
b.
HAUSER trade mark was filed again in Germany on 31.10.2005 by National Pen
and Plastic Industries India, the said mark is still in force.
2. Innowell GmbH and its Trade Marks
a.
Innowell trade mark was filed in 14.05.2009 by INNOWELL GmbH Writing
Technology, Germany. The said company also filed trade mark INK Biotech Lab Chemie
also in 14.05.2009 in class 16. No HAUSER trade mark is owned by Innowell GmbH as
per the German trade mark database.
b.
In the USA, HAUSER trade mark was filed on 10.05.2006 by Hauser GmbH
Germany, which was transferred to INNOWELL GmbH Writing Technology, Germany on
26.05.2009, who subsequently transferred this mark to National Pen and Plastic Industries,
India in 23.07.2014. All links to National Pen and Plastic Industries, India lead to another
Indian company called "Flair Pens Limited".
3. Hauser GmbH
a.
As per German company-house database, Hauser GmbH has its registered office in
Nuremberg, Germany. Its current status is listed as "active". The company is registered at
the trade register at the local court of Nuremberg with the legal form of private limited
company (number HRB 24654). Trade register entry was last updated on Dec 17, 2014.
The company reports contain information on the company's ownership structure and its 2
shareholders and the company deals in foreign trade and has one location. The company
report was last updated on Feb 5, 2016. The said company is currently operating from Dr.Carlo-Schmid-Str. 224, Nuremberg, Germany and its website is located at http://hauserwriting.com created as of 27.03.2008.
b.
The company is still very well in stationery and writing instruments business and
currently (as on 22.03.2016) was selling a large range of pens, which include the following
Roller pens:
A large number of such pens collections sold under brand of HAUSER could also be seen
in a Catalog titled PROEMOTION_2013_Industriepreis present at the website
http://www.hagenbaeumer.com which suggests that the said German company is still in
business and very well selling pens.
c.
It is interesting to note that there is a company based in India operating as Flair Pens
Limited which is using the identical HAUSER trade mark in relation to pens and other
stationery items. As per its website http://hauserpen.in, the said Indian company is making
HAUSER branded pens. Per whois, the said domain is owned by an Indian national named
Rajesh Rathod, who created this domain on 15.05.2015 for Flair Pens Limited.
d.
Designs of pens registered by Hauser GmbH - As it was alleged that the said design
is present in Hauser GmbH Catalogue No.95, one of the way to authenticate genuineness
of this claim would be to make searches over in the German Design Database which is
available freely at https://www.unternehmensregister.de wherein though we found a large
number of pens designs in the name of Hauser GmbH, however, none of the designs
resembled with the design of the pen in dispute.
Net result of the above findings is that, contrary to the claim of the respondent, the German
company Hauser GmbH is still in business of pens. It seems that the Indian company, Flair Pens
Limited took over trade mark Hauser in USA on 23.07.2014 and now operating in this region
selling Hauser branded pens, it is therefore a possibility that the pen presented to the Court
allegedly claimed to have been manufactured by Huaser Germany may have been manufactured
by the said entity as the said pen does not at all looks like a product matching the high German
manufacturing standards which we are used to while using Rotring, Faber-¬Castell, Staedtler and
Pelikan products.
With regards Hauser 95 Catalog which formed basis of novelty attack on the appellant's
design, the said catalog does not at all suggest that it is for the year 1995. Title page only says 95.
May be it is a part of series of catalogues and publications of Hauser GmbH; which is more likely
the case as the respondent has also produced a publication from Hauser GmbH numbered 96. It
was on the respondent to prove that the said publication is of the year 1995 (or any date prior to
the date of filing of the design by the appellant) to defeat newness claim made by the appellant
under section 3(2), which onus unless discharged, cannot be assumed by the court.
With regards the certificate dated 24.10.2008 purported to be issued by Innowell GmbH, it
looks so abhorrently fake that we don't want to look at it twice. No German company would issue
such an untidy document.
Be that as it may, we hereunder reproduce a representation of Hauser 737 Mayor Rollerball
("prior art"), which is held to be identical with the appellant's pen design. First of all, let us admit
that we when Googled "Hauser 737 Mayor Rollerball" there were no citations! Which means that
this term is unknown to the virtual world, meaning thereby one can very safely assume in today's
world that such a brand never existed. Notwithstanding therewith, when we look at the said design
of prior art pen appearing on page 8 (and reproduced on page 20) of the Catalog 95 alongside the
design of the appellant's pen, we find apparent dissimilarities in the first look.
As rightly held by the learned Single Judge, in design cases, the visual aspect is of seminal
importance, meaning thereby when someone looks at one design and then looks at the second
design, if he gets confused and it becomes hard for him to make a distinction between the two
designs, section 3(2) kicks in. But for section 3(2) to be applicable, the complete and overall
impression that stays in intending purchaser's mind when he looks at the two designs is critical. So
the question that needs to be answered is if an ordinary purchaser (who has bought pens in the
past) looks at the prior art Hauser pen and in the second glimpse, looks at the appellant's pen, does
he feel confused? Does he say "Oh my God! this chap has stolen the poor fellow's design"? To us,
the likely answer is 'No'.
While deciding cases about design similarities, courts routinely apply two tests. The
original "ordinary observer" test and a subsequently developed "point of novelty" test. In the
ordinary observer test, courts consider rival designs from the eyes of an ordinary observer, giving
such attention as a purchaser usually gives and then determine whether or not, through those eyes,
the two designs were substantially the same. (Gorham Co. v. White, 81 U.S. 511, 528 (1871)).
Going a bit into history, the "ordinary observer" test evolved in 1871 by the US Supreme
Court holding that the determination of substantial similarity (between two competing designs)
should be made by the eye of an expert in the relevant trade, one who sees and examines the articles
containing them side by side. Court in the above case held that "if, in the eye of an ordinary
observer, giving such attention as a purchaser usually gives, two designs are substantially the same,
if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing
it to be the other, the first one patented is infringed by the other". Those who are familiar with
trade mark law, would immediately relate this finding similar to the side-by-side test used in the
trade mark jurisprudence.
This age-old "ordinary observer" test has gone through a sea of change with passing time.
For example in Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944), the court while
determining design infringement thought it must apply (1) the ordinary observer test, and (2) the
accused device must appropriate the novelty in the patented device which distinguishes it from the
prior art, a determination made by the comparison of the features of the patented designs with the
prior art and with the accused design - "point of novelty" test. A major change came in 1984 in the
case of Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), where court
enunciated the "point of novelty" test. By holding that "for a design to be infringed...no matter how
similar two items look, the accused device must appropriate the novelty in the patented device
which distinguishes it from the prior art". Meaning thereby, even though the court can compare
two items through the eyes of the ordinary observer, it must nevertheless, to find infringement,
attribute their similarity to the novelty which distinguishes the patented device from the prior art.
However in 2008, courts radically overhauled the test for design infringement in the
landmark Egyptian Goddess v. Swisa (543 F.3d 665 (Fed. Cir. 2008)) case. This decision
eliminated the point-of-novelty test for infringement and court adopted a modified "ordinary
observer" test as the sole test for design infringement. The court in Egyptian Goddess case held
that a court might focus on "whether the accused design had appropriated a single specified feature
of the claimed design," rather than looking to "whether the accused design had appropriated the
claimed design as a whole" thereby rejecting the application of the "point of novelty" test, and
made clear that the appropriate analysis should be an "ordinary observer test through the eyes of
an observer familiar with the prior art." The court further held that consideration of the prior art
was not required in every case, but only in cases where the patented design and the accused design
are substantially the same. The court further explained that in cases where the two designs are not
"plainly dissimilar," the infringement analysis will benefit from a comparison of the claimed and
accused designs with the prior art.
Since the doctrine of "plainly dissimilar" is vital in the instant case, we wish to reproduce
the following examples:
Wing Shing Prods (BVI) Co. v. Sunbeam Prods
665 F.Supp.2d 357 (2009)
The courts in this case performed an in-depth analysis to decide whether Sunbeam's coffee
maker was "plainly dissimilar" to Wing Shing's patented coffee maker design. The patented
design and accused product are depicted below:
The court first focused on two major differences in the designs - differently shaped bases
and dramatically different tops. Considering whether these differences would be enough to
render the designs "plainly dissimilar," the court concluded that in the "cluttered world of
the drip-coffeemakers, it seems senseless to attempt to determine whether the ordinary
observer would confuse two designs without looking to the prior art for a point of
reference." Further, the court determined that it was unlikely that an ordinary observer
would be deceived by similarities of the devices. The court concluded that an ordinary
observer familiar with the prior art would not believe the AR 10/12 (the accused design) to
be the 'same as' the '585' patent; thus found no infringement.
Minka Lighting Inc., v. Maxim Lighting International, Inc.
No. 3:06-CV-995-K., 2009 WL-691594 (N.D. Tex. Mar. 16, 2009)
In this case, the court reviewed three different asserted designs directed to light fixtures
and compared them to the respective accused products, two of which are shown below:
In analyzing each of these designs, the court first looked at the overall visual impressions
of the light fixtures, which it determined were distinctive, and then went on to analyze
differences in specific features, such as differences between the silhouette, the finial, and
the design of the lower medallion. The court concluded that, based on these differences,
the patented design and the accused product in each instance were plainly dissimilar.
Ethicon Endo-Surgery, Inc. v. Covidien, Inc.
(Fed. Cir. Aug. 7, 2015)
In this case Ethicon alleged that Covidien's Sonicision cordless ultrasonic dissection device
infringed various utility and design patents. Each of the asserted design patents claimed a
portion (or portions) of a design for a surgical device. In this case, the court used side by
side comparison between the claimed designs and the design of Covidien's accused shears
and determined that they were plainly dissimilar and, therefore, the design patents were not
infringed.
To apply the principles described in the above cases we examine the prior art and the
appellant's pen in the following:
If we look at the overall visual impressions of both the pens, one would note that while the
prior art is a roller ball (i.e. ball point) pen, the appellant's pen is soft-liner with a fixed line
thickness of 0.3mm, thereby intended to be used by a different class of purchasers looking for pens
for different purposes. Which discrepancy sets apart the class of divergent users of each pen. For
example, the prior art being a roller-pen uses heavy pressure of hand and can thus create carbon
copies, however, the soft-liner cannot produce any carbon copies. Now having separated uses and
class of purchasers, we look at few specific features, such as differences between the nib, the cap,
the colors, hardness of the material of the main body and the overall finish of the rival pens. By
using the "ordinary observer"' test through the eyes of an observer familiar with pens, it is thus not
very hard to conclude that, based on these differences, the appellant's design and the prior art
(Hauser pen) are plainly dissimilar. Borrowing the language from the Wing Shing Prods case, we
are of the view that these differences are enough to render the rival designs "plainly dissimilar,"
and we do not see any possibility that ordinary observer would be deceived by similarities of the
two designs if they were available side-¬by-side.
Building on the foregoing outcome, let's imagine the Hauser 737 Mayor Rollerball was
still on sale along with the pen of the appellant. An ordinary person walking into a stationery shop
can inspect both of them and would be free to choose any pen of his liking out of these designs. A
good stationery shop hosts more than a dozen designs of pens and one can purchase any, while
they all do nearly the same job (of writing) but usually none of them look "plainly similar" with
each other. This is the beauty of design law. Plainly dissimilar designs can co-exist happily. If two
designs are identical, design law will prohibit one that was copied or produced later, but if they
are plainly dissimilar, they can freely co-exist, because designs are personal choices. Like colors,
one may like blue and other would like green or yellow, or whatever. A person makes his own
choice and picks a color to wear. Diversity is the natural beauty of life and freedom to choose from
a range of "plainly dissimilar" designs is the driving force of today's economy.
The hard fact is that designs are considered distinct if they have different appearances even
though they are related articles. For example, two vases having different surface ornamentation
creating distinct appearances are required to be claimed in separate applications because designs
protect only the appearance of an article of manufacture, it is possible that minimal differences
between similar designs can render each registerable. Even change of material of two identical
design makes a difference, that's why there is provided a Classification of Goods under the Designs
Rules 1933, and pursuant to Rule 34(1), for the purposes of the registration of designs under these
Rules, goods are classified in 14 different classes in the manner specified in the Fourth Schedule
(reproduced hereunder) and when a person makes an application for registration of a design under
the Ordinance, Rule 35(2) requires the applicant to state the class in which the design is to be
registered and the article or articles to which the design is to be applied. Following is an extract of
the said Classification of Goods:
Class 1. Articles composed wholly of Metal or in which metal predominates, and jewellery.
Class 2. Books and bookbinding of all materials.
Class 3. Articles composed wholly of India-rubber, wood, bone, ivory, paper mache,
celluloid, bakelie, or like substances, or of material in which such substances predominate
(except articles included in Class 10).
Class 4. Articles composed wholly of glass, earthenware or porcelain, clay (burnt or
baked), or cement or in which such materials predominate.
Class 5. Articles composed wholly of paper, card-board, mill-board or straw board (except
articles included in Class-2, and paper hangings), or in which such materials predominate.
Class 6. Articles composed wholly of leather or in which leather predominates, not
included in other classes.
Class 7. Paper hangings.
Class 8. Carpets, rugs and floor coverings in all materials.
Class 9. Lace.
Class 10. Boots, shoes and the like foot-wear.
Class 11. Millinery and wearing apparel (except articles included in class 10).
Class 12. Goods not included in other Classes.
Class 13. Printed or woven designs on textile goods (other than checks or stripes).
Class 14. Printed or woven designs on textile goods being checks or stripes.
It is for the above mentioned reasons, we hold that the alleged Hauser 737 Mayor Rollerball
pen is sufficiently distinct and plainly dissimilar with the appellant's pen on account of the above
identified differences which are clearly noticeable under the ordinary observer test, thus the
registration acquired in respect of the appellant's design under the Designs Ordinance, being
registration No.12247-D dated 09.05.2005 is not hit by section 3(2) of the said Ordinance on
account of the prior art's plain dissimilarity. Thus the impugned orders made for the cancellation
of the said design of the appellant from the register of designs are set aside and the respondent
No.2 is directed to take all such actions to give effect to this order.
The appeal is allowed. There is no order as to costs.
AL/D-8/Sindh
Appeal allowe
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