IP Case Law library

Facts

Dynaplas Ltd. filed an application for the registration of an industrial design titled "Container" on October 27, 2010, under application number KE/ID/2010/001069. The application included detailed drawings and a statement of novelty claiming the design's shape, configuration, and ornamentation as new features. Following formalities compliance and approval for publication, Safepak Ltd. opposed the registration on March 24, 2011. Safepak alleged that the design was not new, as similar features had been previously disclosed in their own registered design number 387, and claimed that Dynaplas was not the bona fide owner of the design.

Issue

The primary issues in this opposition were:

1. Whether the design proposed by Dynaplas embodied any novel features not present in the prior art, specifically Safepak’s registered design number 387.
2. Whether those features, if any, substantially distinguished Dynaplas's design from the prior art to warrant registration.

Rule

Under the Industrial Property Act, Section 86(1), an industrial design is registrable if it is new. A design is deemed to be new if it has not been disclosed to the public anywhere in the world by publication in tangible form, by use, or in any other way, prior to the filing date or, where applicable, the priority date of the application for registration.

 | DYNAPLAS LIMITED 

Analysis
The detailed comparison between Dynaplas's container design and Safepak's previously registered design number 387 was critical in evaluating the novelty of the new application. Both designs shared a round shape, specific features of the container's neck including the beads and the lip, and a wavy rib design on the body, which are prominent elements visible to the eye. These similarities suggest that the essential visual aspects of the container, which contribute most significantly to its overall appearance, were not sufficiently distinct.

Specific Features Under Scrutiny
Dynaplas attempted to distinguish its design based on minor modifications, such as the introduction of a kidney-shaped feature within the wavy ribs pattern. This detail, while unique to the new design, was argued by Safepak to be an immaterial alteration, not enough to confer novelty. The debate centered on whether these small changes impacted the general impression of the design from the perspective of an informed user, which is a key criterion for determining the novelty in design law.

Functionality vs. Aesthetic
Safepak’s arguments highlighted that the modifications introduced by Dynaplas (particularly the kidney shapes within the wavy ribs) also served a functional purpose, specifically to enhance the grip and stability of the container. Under section 84(2) of the Industrial Property Act, features that solely achieve a technical result are not registrable as part of an industrial design. This provision was pivotal because it aligned with the principle that industrial design protection is intended for aesthetic creations rather than technical solutions.
The opponent’s counsel referenced several legal authorities to bolster their argument that trivial modifications do not suffice for novelty. The references to legal texts and past cases, such as Interlego v Tyco, underscored the legal standard that design changes must be substantial and not just mere variations of existing designs. The principle of imperfect recollection was also relevant; it considers whether a consumer, recalling a design imperfectly, could confuse the new design with prior art, suggesting that minor changes might not be enough to differentiate two designs legally.

Conclusion

The Managing Director's decision was informed by a rigorous analysis of both the visual and functional attributes of the designs in question. The ruling not only reaffirmed the strict standards for novelty in industrial design but also highlighted the importance of delineating between aesthetic enhancements and functional attributes in design applications. The case serves as a precedent for future applicants to clearly and specifically identify and justify each element of novelty in their design applications, especially when previous similar designs exist.

Ruling available here.