IP Case Law library

Facts

Malplast Industries Ltd. applied to register an industrial design for a "Juice Bottle" on April 2, 2009, under application number KE/ID/09/00940. The design included novel features such as the overall shape, decorative elements resembling a dog's face and hands with a thumbs-up gesture, and wavy lines at the base. After a formality examination highlighting issues with the initial photographs submitted, the application was approved for publication. However, Safepak Ltd. opposed the registration, arguing that the design was not novel and substantially similar to a previously opposed design (KE/D/2003/00539) featuring a monkey.

Issue

The primary legal issues were:

Whether Malplast's design was sufficiently novel compared to the prior art (KE/D/2003/00539).

The legal ownership of the design given the inventorship and assignment details provided by Malplast.

Rule

Under the Section 86 (1) Industrial Property Act, a design is registrable if it is new and has not been disclosed to the public prior to the application date. The design must significantly differ in overall visual impression from any prior art. Additionally, if the applicant is not the creator, the application must include a statement justifying the applicant's right to the design.

Analysis

Novelty and Design Comparison The opposition argued that Malplast's design bore significant similarities to the prior art, particularly in the shape and thematic elements (animal features on the bottles). Although Malplast's design replaced a monkey with a dog, the placement and style of these features were deemed too similar to constitute novelty. The hearing focused on detailed comparisons of both designs, including the shape of the bottles and the thematic representations of animal features.

The Director concluded that despite minor variations, the overall visual impression of Malplast’s design did not differ substantially from the prior art, lacking the individual character necessary for novelty under the Industrial Property Act. The unique feature argued by Malplast—hands with thumbs up—was not considered to have a significant visual impact to differentiate it from the prior design.

Similarities Between Malplast's Design and the Prior Art

Overall Shape and Structural Features:

Both designs shared a distinctive bottle shape characterized by a slim waist, often described as a "figure 8" silhouette. This shape was integral to both bottles and was noted as a key visual element in the designs.

Each design featured a ring around the neck of the bottle, just below the lid, which was not part of the opening mechanism but purely decorative and identical in style and placement in both bottles.

Thematic Animal Features:

Animal Representation: Malplast’s design incorporated a dog's face and limbs, while the prior art used a monkey’s features. Despite the difference in animal choice, the style and manner of applying these features to the bottle were remarkably similar.

Facial Features: Both designs placed the animal faces at the shoulders of the bottles, with the faces appearing on opposite sides. The styling of the faces, including how the animal features (such as ears and facial expressions) were integrated into the bottle’s design, was closely aligned between the two designs.

Limbs: The limbs of the animals (hands with thumbs up for the dog and folded arms for the monkey) were depicted in a similar fashion. In both designs, the limbs were placed just below the waistline of the bottles and were not shared between the two sides, meaning each side of the bottle had its own distinct set of limbs, enhancing the three-dimensional effect of the design.

Decorative Elements:

Both bottles featured wavy lines around the bottom section, which were deemed functional rather than purely aesthetic as they potentially contributed to the structural integrity of the bottles. This similarity further reduced the perceived novelty of Malplast’s design.

Textual and Non-Visual Elements:

The inclusion of the applicant's name and address at the bottom of the bottle was a common element, although it was debated whether this could be considered a novel aspect of an industrial design.

The analysis by Dr. Henry K. Mutai detailed how both the stylistic and functional elements of the design failed to establish a unique individual character that was visually distinguishable from the prior art. This underscores the importance in design law of not only differing in thematic content (animal types) but also in demonstrating substantial innovation in the application and visual presentation of these themes.

Ownership The legal argument also touched on whether the design’s creator, a director of Malplast, had effectively assigned his rights to the company. The opposition challenged the sufficiency of the assignment documentation. However, the Director ruled that the documentation on record, albeit minimal, was sufficient to establish the transfer of rights from the creator to Malplast, thereby satisfying the requirement under section 87(3) of the Industrial Property Act.

Conclusion

The Director ruled that the design did not meet the statutory requirements for novelty and therefore could not proceed to registration. Malplast’s application was dismissed, and costs were awarded to Safepak. This decision underscores the stringent requirements for novelty in industrial design registrations and the importance of demonstrating substantial differences from any prior art.

Ruling available here.