CLASS 99
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WEDNESDAY, 21 NOVEMBER 2012
Statements of Novelty can create a twist in the tale
Thanks to Baldwins for their blog posting discussing Brand Developers v Ezibuy, [2011] NZHC 50, an interlocutory case concerning those weight-shedding ab training devices you see on daytime TV. The proprietor, Brand Developers, sells the Ab Circle Pro device (left picture - personal trainer not included), and a quick visit to their website will give you the whole spiel (precis: "Are you struggling to lose those love handles that nobody loves? .. Take the ride of your life and get the body of your dreams!").
As an aside, the US Fair Trade Commission has apparently initiated proceedings in respect of some of the claims made for the Ab Circle, noting sourly that "Weight loss is hard work". So much for the body of our dreams.
The alleged infringement was the Ab Twist device (pictured on the right). There are some similarities between the two, but the Ab Circle has, as the name suggests, a circular track for swinging the knee supports, whereas the Ab Twist has a circular arc rather than a complete circle.
However, life is never that simple. The Ab Circle depicted in the NZ design registration number 412655 was a development of an earlier device which looked somewhat similar. The judge quoted the statement from UK design bible Russell-Clarke (5th Ed 1974 at 88):
"Where the defendant has taken only that part of the registered design which was old and has not taken that which is new, there will be no infringement. Thus, where the registered design differs from what has gone before only by some one particular feature, then unless the alleged infringement embodies that feature, it cannot possibly be an infringement."
According to the judge, "Here Fitness Brands’ registered design differed from what had gone before by only one particular feature, the single tubular ring. The fact that it was Fitness Brand’s own earlier design is irrelevant. All non-registered prior art, even if the copyright is owned by a plaintiff, is to be taken into account, and can be relied on by a defendant in assessing novelty. This means that the pivotally mounted knee rests were not novel at the time of registration. That argument can only be made for the tubular ring, and its supporting of the knee rests. For reasons that I have already set out, to my eye the AB TWIST does not contain the same or similar tubular ring that features in the AB CIRCLE PRO. In the AB TWIST the twin tubular guides are significantly different. This factor alone would indicate that there is no serious question to be tried in relation to the alleged infringement."
Tags: infringement, interlocutory injunction, New Zealand, point of novelty, statement of novelty,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA384
Statements of Novelty can create a twist in the tale
As an aside, the US Fair Trade Commission has apparently initiated proceedings in respect of some of the claims made for the Ab Circle, noting sourly that "Weight loss is hard work". So much for the body of our dreams.
The alleged infringement was the Ab Twist device (pictured on the right). There are some similarities between the two, but the Ab Circle has, as the name suggests, a circular track for swinging the knee supports, whereas the Ab Twist has a circular arc rather than a complete circle.
However, life is never that simple. The Ab Circle depicted in the NZ design registration number 412655 was a development of an earlier device which looked somewhat similar. The judge quoted the statement from UK design bible Russell-Clarke (5th Ed 1974 at 88):
"Where the defendant has taken only that part of the registered design which was old and has not taken that which is new, there will be no infringement. Thus, where the registered design differs from what has gone before only by some one particular feature, then unless the alleged infringement embodies that feature, it cannot possibly be an infringement."
According to the judge, "Here Fitness Brands’ registered design differed from what had gone before by only one particular feature, the single tubular ring. The fact that it was Fitness Brand’s own earlier design is irrelevant. All non-registered prior art, even if the copyright is owned by a plaintiff, is to be taken into account, and can be relied on by a defendant in assessing novelty. This means that the pivotally mounted knee rests were not novel at the time of registration. That argument can only be made for the tubular ring, and its supporting of the knee rests. For reasons that I have already set out, to my eye the AB TWIST does not contain the same or similar tubular ring that features in the AB CIRCLE PRO. In the AB TWIST the twin tubular guides are significantly different. This factor alone would indicate that there is no serious question to be tried in relation to the alleged infringement."
That conclusion was supported by the statement of novelty of the registered design which stated that ‘….. novelty resides in the features of shape and configuration of the exercise machine having a tubular ring and a pair of pivotally mounted knee rests movably supported on the tubular ring, as shown in the accompanying representations’. The prior art had a circular arc and not a "ring", and likewise the infringement. Perhaps the narrow statement of novelty was necessary to achieve validity over the past design, but as Baldwins point out, this case illustrates the dangerous effects on infringement.
US readers will recognise Russell-Clarke's dictum as representing the "point of novelty" analysis followed there until recently. It is a good short-cut in cases where (as here, apparently) the design has just one difference from the prior art but is "difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design", as the Federal Circuit en banc ruled in Egyptian Goddess v Swisa, substituting instead the "ordinary observer" test now used. Having said that, if a US design patent had included a claim corresponding to the statement of novelty used in New Zealand, there would perhaps have been little alternative but to construe it to exclude the alleged infringement.
With no "statement of novelty", claim or disclaimer is it feasible to apply the "point of novelty" approach to Community Designs in Europe? The "overall impression" test would seem, like the "ordinary observer" test, to rule out concentrating on just the novel features. Perhaps there is no need of this shortcut since a broader view of the scope of the design would lead to invalidity. However, in cases such as Apple v Samsung (or Samsung v Apple, depending on your jurisdiction) where the infringement Courts had no jurisdiction over validity since it was already in issue before OHIM, the temptation to take a shortcut rather than wait for the multitude of validity appeal stages to be complete may be irresistable.
Posted by: David Musker @ 13.05Tags: infringement, interlocutory injunction, New Zealand, point of novelty, statement of novelty,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA384
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