Glaxo Group Ltd v. Chia Tai Tianqing Pharmaceutical Group Co., Ltd

HCIP 60/2019

[2022] HKCFI 1350

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 60 OF 2019

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BETWEEN

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J U D G M E N T

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1.This is the Plaintiff’s application for an order that each of the following design registrations (“the RDs”)  be revoked and removed from the Register of Designs:

(i)  Registration No. 1801008.8(“RD1”), with the representations or design drawings shown in Annex 1 of this Judgment;

(ii)  Registration No. 1700129.2M001(“RD2”), with the representations or design drawings shown in Annex 2 of this Judgment; and

(iii)  Registration No. 1700129.2M002 (“RD3”), with the representations or design drawings shown in Annex 3 of this Judgment.

2.RD1 has a priority claim of 28 November 2017, whilst RD2 and RD3 have priority claim of 2 August 2016.  All the RDs are registered in respect of inhaler.  RD2 and RD3 are in all material aspects identical save and except that RD3 has an additional claim of colour in the statement of novelty.

3.The Plaintiff’s case is that the RDs were not “new” at the time of their registrations within the meaning of s 5 of the Registered Designs Ordinance (Cap. 522)  (“the RDO”)  having regard to the prior arts available and particularised in Appendix B attached to the Originating Summons (collectively “the Prior Arts”).  In so far as there are differences between the RDs and the Prior Arts, the Plaintiff’s case is that such differences are immaterial or are variants commonly used in the trade.  Further or alternatively, such differences relate to features which do not qualify as “design” within the meaning of s 2 of the RDO.

4.The Prior Arts relied on by the Plaintiff can be listed out as follows:

(i)  The Plaintiff’s DISKUS Inhaler which was first published in about early 1990s (“PA1”);

(ii)  Registered Community Design No. 002226407-0001 (application filed on 24 April 2013, registered on 8 May 2013 and registration surrendered on 3 February 2020)  (“PA2”);

(iii)  Registered Community Design No. 002226407-0002 (application filed on 24 April 2013, registered on 8 May 2013 and registration surrendered on 24 January 2020)  (“PA3”);

(iv)  Registered Community Design No. 002256834-0001 (application filed on 17 June 2013, registered on 1 July 2013 and registration surrendered on 3 February 2020)  (“PA4”);

(v)  Registered Community Design No. 002256834-0002 (application filed on 17 June 2013, registered on 1 July 2013 and registration surrendered on 24 January 2020)  (“PA5”);

(vi)  Registered Community Design No. 002678292-0001 (application filed on 9 April 2015, registered on 23 April 2015 and registration surrendered on 24 January 2020)(“PA6”);

(vii)  Registered Community Design No. 001842220-0003 (application filed on 29 March 2011, registered on 11 April 2011 and registration declared invalid on 16 September 2014)  (“PA7”);

(viii)  Registered Community Design No. 001842246-0001 (application filed on 29 March 2011, registered on 8 April 2011 and registration declared invalid on 21 May 2014)  (“PA8”);

(ix)  Registered Community Design No. 002242404-0001 (application filed on 23 May 2013, registered on 6 June 2013 and registration expired on 23 May 2018)  (“PA9”); and

(x)  Registered Community Design No. 002277459-0001 (application filed on 19 July 2013, registered on 29 July 2013 and registration declared invalid on 27 March 2019)  (“PA10”).

5.In order to assist the court in comparing the designs in the RDs and the Prior Arts, the Defendant has helpfully prepared a comparison table “Annex 4” showing the RDs and all the Prior Arts.  For easy reference, I include this table in Annex 4 of this Judgment (“the Annex 4 Table”).

BACKGROUND AND THE PARTIES

6.The Plaintiff forms part of the GlaxoSmithKline group of companies, a multinational group of pharmaceutical companies under GlaxoSmithKline plc (“GSK”), which is listed on both the London Stock Exchange and the New York Stock Exchange.  GSK is the developer and marketer of the DISKUS Inhaler i.e. PA1.

7.According to the Plaintiff, GSK completed the original design of its DISKUS Inhaler in around 1994 when it was first launched in Europe.  The Plaintiff has been selling products in that design in Europe and globally for the last 25 years.

8.The DISKUS Inhaler has up to 2015 been protected by a family of patents for invention in respect of its principle of construction.[1]

9.When all the patents for the DISKUS Inhaler had expired, GSK made various attempts to register the outward appearance of the DISKUS Inhaler as a trade mark in various jurisdictions.  The Plaintiff currently owns trade mark registrations in Germany and the Mainland in respect of the 3-dimensional shape of the product.  I would refer these as “the German Trade Mark” and “the Mainland Trade Mark” respectively.

10.The Defendant complains that the Plaintiff seeks to obtain a monopoly in the outlook of the product indefinitely subject to renewal of the trade mark registrations in those jurisdictions.

11.Based on the German Trade Mark, the Plaintiff commenced legal proceedings in 2018 to 2019 in the German court against a polish company Celon Pharma Spólka Akcyjna S. A. (“Celon”).  The Plaintiff applied for preliminary injunction against the launch of inhalers of a shape allegedly similar to the German Trade Mark. Within months of Celon’s failure to set aside the preliminary injunction on appeal, Celon surrendered in bulk a total of 5 Community Registered Designs on inhalers.  The Plaintiff now turns around to use the 2020-surrendered registered designs of the outlook of the subject Celon products, i.e. PA2 to PA6, to attack the novelty of RD2 & RD3.

12.In 2016, the Defendant began designing what came to be called the “Shield Design” and the “Leaf Design” for its inhalers in 2017.  The Defendant obtained design patents for the two designs through the China National Intellectual Property Administration in 2017 and 2018.

13.GSK filed a Request for Declaration of Invalidity against those designs in 2019.  The validity of the Defendant’s design patents has since been upheld on 9 January 2020.  The Defendant seeks to rely on the decisions made by the Mainland authorities to support the novelty of the RDs.

14.Though the Defendant has tried very hard to portrait a picture that the Plaintiff has been trying to gain an unfair monopoly over the design of its DISKUS Inhaler, the aforesaid matters are not technically relevant in assessing the novelty of the RDs.  The assessment exercise has to be conducted in accordance with the principles listed out in the next part of this Judgment, and these matters are only relevant to the extent of providing the background leading to the present dispute.

15.Before I assess the novelty of the RDs, I have to set out the statutory framework and the legal principles relevant to the present assessment exercise.

STATUTORY FRAMEWORK AND THE RELEVANT LEGAL PRINCIPLES

(i)  The statutory framework

16.S 5 of the RDO provides that “new” design is registrable. S 5(2)  reads:

“A design for which an application for registration is made shall not be regarded as new if it is the same as –

(a) a design that has been registered in pursuance of a prior application, whether or not that design has been registered in respect of the same article for which the application is made or in respect of any other article; or

(b) a design that has been published in Hong Kong or elsewhere before the filing date of the application, whether or not that design has been published in respect of the same article for which the application is made or in respect of any other article,

or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.”

17.On the other hand, s 2(1)  of the RDO defines “design” as follows:

“‘design’ means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include –

(a) a method or principle of construction; or

(b) features of shape or configuration of an article which –

(i) are dictated solely by the function which the article has to perform; or

(ii)  are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.”

18.S 45 of the RDO also provides that:

“The court may, on the application by any person, order the registration of a design to be revoked, on the ground that, at the time of its registration, the design was not new or was not registrable for any other reason.”

19.The onus is on the person who attacks the validity of the registration of a design to establish that, on the balance of probabilities, the design was not new at the time of its registration.[2]

(ii)  Features of a “design”

20.The statutory definition of “design” restricts it to features “which in the finished article appeal to and are judged by the eye”. The words “judged by the eye” will exclude cases where it is shown that the customer is not influenced in choice by appearance, but only by criteria of suitability for a purpose.[3]

21.In Amp Inc v Utilux Pty Ltd[4], the House of Lords stated the following:

“Those who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but by appearance. Common experience shews that not all are influenced in the same way. Some look for artistic merit. Some are attracted by a design which is strange or bizarre. Many simply choose the article which catches their eye. Whatever the reason may be one article with a particular design may sell better than one without it: then it is profitable to use the design. And much thought, time and expense may have been incurred in finding a design which will increase sales.”[5]

“The question is raised as to the sense in which the features in a finished article are to appeal to and are to be judged solely by the eye. I think that it is clear that the particular feature which is in question or under consideration must be seen when the finished article is seen. But the words of the definition point, in my view, to considerations other than that of merely being visible. The phrases ‘appeal to’ and ‘judged solely by the eye’ denote features which will or may influence choice or selection. The eye concerned will be the eye, not of the court, but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question. This does not mean that the ‘appeal’ or the attraction must be to an aesthetic or artistic sense - though in some cases it may be. The features may be such that they gain the favour of or appeal to some while meeting with the disfavour of others. Beyond being merely visible the feature must have some individual characteristic. It must be calculated to attract the attention of the beholder.”[6]

22.The eye to which appeal must be made, and the eye which is to judge, is not the eye of the court but the eye of the customer.  The underlying purpose of design registration is to give to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have the design, to those which do not have it.[7]

23.Though a particular design may appeal to the aesthetic sense or to the sense of the beautiful, it has always been considered that a design need not possess any artistic merit.[8]

24.The impression resulting from the design may influence choice and selection on the part of a person desiring to acquire the finished article carrying the design, and if it influences such a person, then the design may be considered to have “eye appeal” for the purposes of the statutory definition. The design may be “calculated to attract the attention of the beholder”, regardless of whether or not it makes a favourable impression upon him.[9]

25.A “design” does not include features of shape or configuration which are dictated solely by the function which the article has to perform.  The underlying policy of this exclusion is to prevent registered designs being used to obtain monopolies which in effect cover the functional aspects of the design of articles.[10] The phrase “dictated solely by the function” had been held to mean “attributable to or caused or prompted by” function.  Where a shape is adopted by a designer upon the sole requirement of functional ends, i.e. to make the article work and not to appeal to the eye, then the provision excludes it from statutory protection.[11]

(iii)  Approach to assessing novelty of a design against prior arts

26.Whilst the test of novelty laid down in the RDO is largely based on the registered design law of the United Kingdom (“UK”)  at the material time, UK law and European Union (“EU”)  harmonized law have since evolved.  I will first identify the legal principles to be applied in assessing novelty under the old UK law before addressing some of the differences under the new UK and EU regime.

27.The legal principles to be applied in assessing novelty of a design against prior arts under the old UK law can be summarised as follows:

(i)  It is not permissible to make a mosaic of a number of prior documents for the purpose of attacking novelty.  If the attack on novelty is to succeed, the design must be disclosed in the single prior document.[12]

(ii)  After identifying the “designs” in question (in accordance with the principles mentioned in the preceding section), a comparison exercise has to be carried out to see whether the design (the subject matter of the application or registration)  is the same as those disclosed in the prior arts, or whether they differ in “immaterial details”, or whether such differences are merely features which “are variants commonly used in the trade”.  If all the differences can be categorised either as immaterial details, or as variants commonly used in the trade, then the subject design is deemed not new.[13]

(iii)  The whole of the design need not be new.  A design may well be novel although all the individual features are old at the date of registration, for the combination of two or more old and well-known designs or parts of designs will constitute novelty, if the effect, i.e. the appearance of the combination as a whole, is new.[14]

(iv)  An actual manufactured article embodying the design may also be looked at to assist the process of comparison.[15]

(v)  The comparison or difference is assessed by reference to the eye of the customer, not the eye of the court.[16]   In Household Articles Ltd’s Registered Design[17], Laddie J described the court’s role as having to “assess novelty through the eyes of the customer or relevant trader, having expert instructions on the features which were to be ignored or given less weight as a matter of law”.  In Gaskell & Chambers Ltd v Measure Master Ltd[18], Aldous J mentioned that, in comparing the designs, “the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is in the eye of such interested person, the interested addressee, which is relevant”.  I would therefore describe such person as “the interested customer”.

(vi)  In identifying the differences, one should only compare “designs” i.e. features which have eye appeal, excluding functional features.[19] In this regard:

(a)  “Eye appeal” refers to features which will or may influence choice or selection.

(b)  As for functional features, as is consistent with s 2 of the RDO, these must be solely functional.[20]  For example, the fact that a button on an electronic wristband serves a functional purpose does not preclude it from being capable of being regarded as a differentiating factor, as the button could be placed on the wristband in different ways and could have different shapes and sizes.[21]  The test is whether the shape is solely there to make the article work, as opposed to being there to appeal to the eye.[22]

(vii)  So far as the “immaterial detail”limb is concerned:

(a)  Mere slight variations from articles already manufactured are not registrable.  The variation from what has gone before must not be trivial or infinitesimal.  Small variations which any skilled workman might make between the articles which he makes for different customers are not enough.[23]

(b)  What design feature is an immaterial detail is necessarily determined in the light of the manner in which the product in question is used.[24]

(c)  The design must be looked at as a whole.  The test is to look at the two designs side by side, but also apart, and a little distance away.[25]  The question is whether an article made according to the design under consideration is substantially similar in appearance to an article made according to the alleged anticipation.[26]

(d)  Whilst the words “substantial” and “substantially similar” are used in some of the judicial decisions, the RDO uses the words “immaterial details” in the test of novelty.  In Russell-Clarke and Howe on Industrial Designs[27], the learned authors raised the issue as to whether the words “immaterial details” used in the test of novelty are the same as “not substantially different” used in the test of infringement.  In Valor Hearing Co Ltd v Main Gas Appliances Ltd, Whitford J considered that, despite the difference in wording, “by and large the test must be the same”.[28]  Although there may be little difference in substance between the two tests, I agree with Ms Tam SC, counsel for the Defendant, that by reason of the express wording used in s 5(2)(b)  of the RDO, the court should stick to such wording in applying the test of novelty.

(e)  The novelty should be substantial having regard to such matters as the nature of the article, the extent of the prior art and the number of previous designs in the field in question.  Where there is a huge volume of prior art, there must be some clearly marked and defined differences, though the actual standard of ingenuity required on the part of the author is extremely small.[29]  Depending on the field in question, the element of novelty may of necessity be likely to be within a small compass, and it is not necessarily sufficient to point to a number of elements of similarity to past design in order to show that the design is not new.[30]

(viii)  As for the “common trade variant” limb:

(a)  A common trade variant may be visually significant.[31] The two limbs are therefore cumulative.

(b)  The trade variant requirement has to be assessed through the eye of an instructed person, i.e. that he should know what was common trade knowledge and usage in the class of articles to which the design applies. The introduction of ordinary trade variants into an old design cannot make it new or original.  For example, if it is common practice to have or not to have spikes in the soles of running shoes, a man does not make a new or original design out of an old type of running shoe by putting spikes into the soles.[32]

(c)  The trade variant must be “commonly used”, and a design can be novel even if it is made up entirely by blending together a number of old designs provided the resulting combination itself has a sufficiently distinctive appearance.[33]  It is only where all the differing features have been used before, and used commonly (or are immaterial), that the design will be deemed to be lacking in novelty.  For example, if such feature has only been shown in one trade catalogue, it is not sufficient evidence that it is a common trade variant.[34]

28.Colour is generally of no importance when comparing “designs”. In Re Calder Vale Manufacturing Co and Lappet Manufacturing Co’s Designs, Farwell J stated the following:[35]

"First of all, there is the question of colour. I desire with regard to the colours to say this, that while I am very far from suggesting that there may not be cases where differences in colour may be of importance and, indeed, sufficient to differentiate the designs, prima facie, in my view colour is not a matter of any great importance in considering a question of this kind, more especially in a case such as this where the colours are for all practicable purposes limited to a few, in this case four colours, where the variations of the colours is not such in my judgment as materially to affect the similarity of the design, the design being the pattern, which remains the same and has the same appeal to the eye, although the arrangement of the four colours may be different in each case. Therefore, so far as colour is concerned, in my judgment no importance should be attached, for the purpose of comparing these Designs, to the difference in colour."

29.The rationale behind the principle that colour is generally of no importance when comparing designs has been explained in Russell-Clarke:

"If colour was in the normal course of events taken into account as forming part of the design, as was pointed out by the Assistant Comptroller in his decision in the Associated Colour Printers’ Application, it would be practically impossible to secure effective protection for any design for a pattern because either it would be necessary to register the pattern in all possible combinations of colours, or trade rivals would be able with impunity to apply the pattern in colours other than those shown in the registration. It would appear, therefore, that colour must, prima facie, be ignored. Ordinary differences of colour may, in other words, be regarded as mere 'trade variants', which do not alter the identity of the design. In certain exceptional cases, however (e.g. a shot design for a silk handkerchief), it is possible that the colours and their arrangement might form part of the design, especially if the colouring was called attention to in the statement of novelty."[36]

30.The aforesaid approach under the old UK law also represents the law in Hong Kong in assessing novelty of the registered designs.

(iii)  The new UK and EU regime

31.Under the new UK and EU regime, the requirement of novelty under EU law continues to include “immaterial details” as a disqualifying factor, but the “common trade variant” limb has been replaced with the new requirement of “individual character” under EU harmonized law, which imposes a higher threshold before protection can be claimed.[37]

32.The new requirement of “individual character” under Article 5(1)  of the EU Directive 98/71/EC requires the design to produce a different “overall impression” on the informed user from any prior design. The new concept requires the court to be well-informed of the prior art and the nature of the product, and to assess and take into consideration the “degree of freedom of the designer” in the process of coming up with a design of “individual character”.[38]   However, such concept has no place under Hong Kong law.  All the invalidated prior arts relied on (PA7, PA8, PA10)  were invalidated under the EU Directive.

33.There is also another issue under the EU harmonized law which deserves consideration here.  As mentioned above, novelty of a registered design is assessed by reference to the eye of the customer.  Under the EU harmonized law, the issue is assessed by reference to the eye of an “informed user”.

34.The characteristics of the “informed user” have been set out in the decision of the EU General Court in Gandia Blasco, SA v OHIM[39] and can be summarized as follows:

(i)  The informed user is not a user of average attention, but a particularly observant one, either because of their personal experience or their extensive knowledge of the sector in question.

(ii)  On the other hand, the informed user is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs in issue.

(iii)  In other words, the informed user is one who, without being a designer or technical expert, knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of their interest in the products concerned, shows a relatively high degree of attention when they use them.

35.As pointed out by the authors in Russell-Clarke[40], “the concept of the ‘informed user’ does not seem all that different from the customer whose eye was the touchstone of assessing the validity of a design (and infringement as well)  under the old UK registered law, although he or she may possibly be deemed to have a slightly more comprehensive knowledge of the designs which are known in the normal course of business.”

36.In the present exercise, I would stick to the use of the “interested customer” test as mentioned in §27(v)  in assessing the novelty of the RDs.

37.Further under the new UK and EU regime, there is certain restriction on the availability of the prior art which can be used to challenge a registered design.  However, this is a non-issue here and so I do not propose to discuss any further the differences between the two regimes.

(iv)  The relevance of related foreign decisions

38.In the evidence filed by the Defendant, it also sought to rely on the decisions in the invalidation proceedings in the Mainland in support of its argument that the RDs are “new”.   However, it is trite that, in the absence of any evidence on the relevant laws on registered designs and revocation, such decisions are entirely irrelevant.  The present application must be decided in accordance with the laws in Hong Kong and based upon the evidence filed before this court.  In fact, I have refused the Defendant’s application to introduce other related foreign decisions as evidence shortly before the substantive hearing.

ASSESSMENT OF THE NOVELTY OF RD1

39.I then proceed to assess the novelty of the RDs by reference to these principles.  I first start with RD1.

(i)  The design of RD1

40.The Defendant describes RD1 as the “leaf design”.

41.In identifying the “design” of RD1 in accordance with the established principles, in particular: (i)  only those features which have an eye appeal, in the sense that they will influence the choice and selection and the relevant consumers, can be qualified as “design”; and (ii)  features solely dictated by function should be disregarded, the “design” of RD1 consists of the following features:

(i)  The upper half exposing the body is generally circular, exposing a thumb grip, while the lower half of the article is angular and not level in its thickness.  There are gentle ridges rising over the surface of the lower casing that extends from the centre to the edge of the circular surface, and finishes up at the angular edge. The thickness of the lower part of the article is not round.

(ii)  The overall shape is one of an irregular shape with a circular body exposed in the upper part, a prominent recession immediately below the mouthpiece exposing the lever and slot in the body, and gently polished angular features in the casing occupying the entire lower part of the device.

(iii)  In the centre of the outer casing, there is a leaf-shaped design with a small circular shape in the centre indicating the axis of rotation of the body and the outer casing.

(iv)  In the lower half of the outer casing, the shape and configuration feature a U-shaped opening along the thickness of the casing, through which the lever and guiding slot in the body of the device are exposed even when the device is in a closed position.  For the pattern and ornament, the front and back faces both reinforce the “leaf” motif by featuring patterns of veins of a leaf covering the lower part of the casing, with veins extending to the edge of the angular shape conjoining with identical vein-like patterns extending in like manner from the other side of the casing.  

42.I agree with Ms Tam that the aforesaid features present an organic design idea (that of a leaf)  made up of irregular and asymmetrical shapes and lines.  Apart from looking like a leaf, an “interested customer” may also describe the device as looking like a helmet or head-guard for players in American football games.  With such kind of design, the overall shape with the eye-catching part being the casing must have been designed for eye appeal and could not have escaped the attention of an observant user.

(ii)  The comparison with the Prior Arts

43.A useful guide for conducting the comparison exercise is the Annex 4 Table.

44.In my judgment, PA1, PA7 and PA8 are most relevant in assessing the novelty of RD1.  Though there are a few relevant prior acts, I am fully aware that, in making the assessment, it is not permissible to make a mosaic of a number of prior documents for the purpose of attacking novelty.  If the attack on novelty is to succeed, the design must be disclosed in the single prior document.

(a)  RD1 against PA1

45.The Plaintiff relies mainly on the design of its own DISKUS Inhaler to attack the novelty of RD1.  In particular, Mr Wong, counsel for the Plaintiff, refers me to the comparison table in §35 of the 1^st Affidavit of Mr Paul Kenneth Rand (“Rand”)  to show the similarities of both designs.

46.Despite these similarities, there are some features in the design of PA1 which are different from those in the design of RD1:

(i)  The commercial embodiment (i.e. the Plaintiff’s DISKUS Inhaler)  shows an overall circular shape, with no edges that disturb the smooth circumference except for the thumb grip exposed as part of the body of the device.  The circular shape tapers at the edge in a rounded fashion both in the body and in the casing, indicating a unitary circular shape in both the body and the casing.

(ii)  The German Trade Mark obtained by the Plaintiff for its product shows the inhaler in two positions.  It presents the casing and the body in a sleek and smooth singular unitary shape in the closed position, only exposing the functional parts in the second (open)  position, i.e. the lever for dispensing medicament, and the mouthpiece through which the medicament is inhaled.  The device in its closed position shows a solid cover with no part of the operational parts of the body exposed.

(iii)  The overall shape is one of geometric symmetry, with the thumb grip forming the only feature disturbing the round shape with rounded edge.  The design concept is a sleek shape and clean lines making up a modern outlook.  As stated by Rand in his 1^st Affidavit[41], the users would often describe the Plaintiff’s DISKUS Inhaler as “a UFO or space ship”.

(iv)  In the centre of the outer casing, the Mainland Trade Mark in respect of the Plaintiff’s inhaler and the commercial embodiment both feature a perfect circular shape in a smooth patch, with no additional shape inside to mark the axis of rotation.  In the commercial embodiment, it can be seen that the round patch is used for affixing the product label.  In the German Trade Mark, a small circular marking is shown inside the perfect circle in the centre of the article.

(v)  In respect of the lower half of the casing, no opening is featured in the outer casing. The outline is smooth and its shape decidedly symmetrical.  There are multiple stripes underneath the circular shape in the centre of the casing.  In fact, the commercial embodiment features an outer casing with six closely arranged parallel stripes on both facings, dipping in the centre to align with the lower part of the rim of the circular-shaped centre, and extending symmetrically upwards towards the upper edge of the casing.  The German Trade Mark features a smooth surface on the outer casing with no patterns or stripes.

47.It is evident that each of the above differences is visually significant in the context of this small handheld article.  Further, none of the above features has any identifiable functional importance.  Neither has the Plaintiff provided any evidence that they are common trade variants.

48.Mr Wong submits that the angular bottom in the RD1 design is hardly noticeable by the average user.  However, as demonstrated in the legal principles set out above, the court has to take into account the manner of use that will be made of the article in the process of comparison.  The article is a handheld device, and will be appreciated from a close distance.  I agree with Ms Tam that, within this small device, there are contraptions and moving parts which are operated by the user gripping onto the outer casing in order to dispense medication and inhale it.  Obviously, the difference is judged by reference to the eye and not the feel of holding onto the devices.  Yet the features of shape and configuration of RD1 that are different to the DISKUS Inhaler are plainly noticeable by an “interested customer” with a knowledge of the features of other inhalers on the market, and having to use the article by gripping onto the outer casing in order to rotate the cover and operate the lever.

49.Likewise, the leaf motif on the surface of the casing and its associated veined patterns as shown in RD1 are clearly visually significant, given their positioning relative to the article as a whole and the proximity at which the inhaler is held to the eyes.  As I have mentioned above, the design in RD1 also looks like a head-guard and an “interested customer” would not have ignored these features.

50.On the other hand, the eye-appeal of the Plaintiff’s DISKUS Inhaler would be its symmetrical and sleek, spaceship-like appearance.  An “interested customer” would not have failed to discern the difference in shape, and it cannot be said that the differences in shape and configuration are “trivial or infinitesimal”.

51.I agree with Ms Tam that one of the most visually significant differences is the presence of the lower U-shaped opening on the thickness of the article in the design of RD1.  The opening spans the entire thickness of the article and beyond, and its profile is clearly visible in the plan view of the article.

52.In interpreting the drawings, the Plaintiff thinks that it is an extra thumb grip in addition to the one on the body of the design positioned in the upper part of the article.[42] It is therefore submitted that this serves a functional purpose and is not protected by design.  However, if one examines RD1 closely, it will be seen that this lower opening on the outer casing appears as a window on the lower part of the article, through which the lever and guiding slot in the body are visible.  This is a deliberate design feature to appeal to the eye, and the presence of the recessed window serves no identifiable functional purpose at all.  Less still does the recessed window serve the function as a “thumb grip”: if one were to place a thumb over the recession, it will actually stop the rotation of the casing and obstruct the operation of the article as a medicament dispenser and inhaler.

53.Mr Wong submits that, as there is no evidence to rebut Rand’s allegation that the lower opening serves the function of an additional thumb grip, the court should ignore Ms Tam’s submissions in this regard.  I disagree.  The court should not accept all the evidence of Rand on face value. In the comparison exercise, the court can look at the designs and the products concerned to make its own assessment.  As shown by the other designs in the Prior Arts, there is no reason why there should be an additional thumb grip for the device to function.  Such feature is not solely for functional use. Further, by the presence and the positioning of the lower opening, it reinforces the organic design of the whole device making it looks like a head-guard or a helmet.  This is certainly an eye-appeal feature.

54.It is also suggested by the Plaintiff that the leaf-shaped design at the centre of the casing in RD1 is a “trade variant”. However, there is a total lack of evidence suggesting that this variation in the design of the central part of the face of an article of this type has actually been in common use in the trade.  There is therefore no evidential basis for the difference to be disregarded as a variant commonly used in the trade. Further, the different shapes of the pattern in the centre of the casing can hardly be considered as “trade variants”.  The same observations apply to the vein-shaped design and the generally angular shape of the lower half of the casing.

55.The Plaintiff also suggests that the design in the centre of the casing is functional, i.e. “to enable the posting of the information label thereon”.  I disagree.  It is plain that it is not solely functional, in that a design choice has been made on the part of the Defendant’s designer to have this shape shaped like a leaf in order to appeal to the eye.  If labeling is applied in the commercial embodiment, it is likely that the label will be leaf shaped as well.  This feature standing alone or when considered in the context of the article as a whole cannot be regarded as “trivial or infinitesimal”.  Neither is there any evidence that this particular variation of the central shape has been “commonly used” “in trade”.

56.Finally, the Plaintiff suggests that the “wavy lines” at the bottom of its DISKUS Inhaler casing are there for a functional purpose, i.e. to enable the user to have better grip of the inhaler.[43] However, I agree with Ms Tam that this is neither here nor there, as it is plain that the “wavy lines” are not solely dictated by functional considerations.  Different patterns can achieve the same function (as is the case in RD1 and PA1 respectively).  Further, the vein-like patterns on the casing in RD1, reminiscent of the leaf motif, are there to appeal to the eye, and are clearly not there to serve any functional purpose at all.  Even if any functional purpose could be attributed to them, their arrangement and appearance in the context of the design as a whole is obviously not solely dictated by any identifiable function.

57.For these reasons, the challenge against the novelty of RD1 based on the design of PA1 fails.

(b)  RD1 against PA7 and PA8

58.I then compare the designs of RD1 against those of PA7 and PA8.  Like PA1, these two designs are circular in shape.  There is no suggestion in the Plaintiff’s submissions that RD1 is not “new” in light of PA7 or PA8.

59.In the Annex 4 Table, the top two drawings of PA7 and PA8 show the devices in the closed position, whilst the third drawings show the devices in the open position.  As shown in the top two drawings (i.e. in the closed position), the designs of PA7 and PA8 are similar to that of PA1 with one discernible difference: the articulations of the pattern under the circular centre are different.  In PA7 and PA8, it is articulated as a ribbon of the same shape and proportion as the pattern of multiples stripes taken together.

60.As the designs of PA7 and PA8 are similar to that of PA1, the observations I made above in respect of the differences between RD1 and PA1 are also applicable here.  It is evident that each of these differences are visually significant in the context of a relatively small inhaler and none of them are solely functional.  Neither has the Plaintiff provided any evidence that they are common trade variants.  Hence, the challenge based on PA7 and PA8 also fails.

(c)  RD1 against PA2, PA3, PA4, PA5 & PA10

61.The designs of the other prior arts do not even come close to look similar to the design of RD1.  For the sake of completeness, I would briefly set out the main differences.

62.PA2, PA3, PA4, PA5 & PA10 are all generally circular with a circular rim and a narrow flat portion at the bottom serving as a pedestal for the article.  However, the designs of these prior arts are different from that of RD1 in the following ways:

(i)  Each features a thickened panel running down the centre of the outer casing, extending from the top of the circular circumference defining the upper limit of the outer casing to the bottom of the length of the article, tapering towards the bottom to form a pedestal to enable the article to stand up.  Visually, the casing is made up of an inverted U-shaped panel tapered towards the bottom, and superimposed on an overall circular-shaped article which is closely similar to the Plaintiff’s DISKUS Inhaler.  RD1 does not have any of these features, and cannot stand on any portion of its thickness.

(ii)  None of PA2, PA3, PA4, PA5, & PA10 features the prominent recessed window at the lower part of the article on the outer cover.  Each of these prior art shows the device with solid cover with no part of the operational parts of the body exposed while in the first position (closed).

(iii)  Instead of a central circular or leaf shape covering almost half of the length of the radius of the body of the article, each of PA2, PA3, PA4, PA5 & PA10 features the inverted U-shaped panel described above.  With the exception of PA10, each of them features a small circular shape in the centre of the article indicating the position of the axis of rotation.

(iv)  PA2, PA3 & PA4 each features a generally parabola-shaped design located on the casing.  For PA4, PA5 & PA10, there are additional horizontal stripes on each side of the parabola-shaped design.

(v)  The vein-like patterns in RD1 covering the entire lower part of the outer casing are not present in any of PA2, PA3, PA4, PA5 or PA10.

63.It is evident that each of the above differences is visually significant in the context of a relatively small inhaler and none of them are solely functional.  These designs are so fundamentally different from RD1 at various levels that not even the Plaintiff is seriously suggesting that the differences are either immaterial or commonly used trade variants.

(d)  RD1 against PA6 & PA9

64.PA6 and PA9 are even more different from RD1 in features that are easily discernible.  PA6 and PA9 each features a central panel of slightly different shape extending to the lower part of the outer casing.  Their outer casing is of a general width compatible to the width of the round body, the upper half of which is exposed, only tapering slightly at the bottom to join with a flat surface about the thickness of the article to enable the article to stand up.  The thumb grips of both PA6 and PA9 appear to be differently shaped and are of a different structure from that in RD1.  Additionally, PA9 features undulating recessed grooves on the side of the outer casing which would serve the function of facilitating a secure grip.  Both designs are so fundamentally different from RD1 at various levels that not even the Plaintiff is seriously suggesting that the differences are either immaterial or commonly used trade variants.

65.For these reasons, I find that the design of RD1 is “new” and its registration is therefore a valid one.

ASSESSMENT OF THE NOVELTY OF RD2 AND RD3

(i)  The designs of RD2 and RD3

66.The designs of RD2 and RD3 are basically the same save that RD3 has an additional colour claim.

67.In identifying the “designs” of RD2 and RD3 in accordance with the established principles, in particular: (i)  only those features which have an eye appeal, in the sense that they will influence the choice and selection and the relevant consumers, can be qualified as “design”; and (ii)  features solely dictated by function should be disregarded, the “designs” of RD2 and RD3 consist of the following features:

(i)  an outer appearance consists of a circular top set in a flat-based housing part;

(ii)  the circular top is in the shape of a “disc”;

(iii)  the housing part covers approximately half of the “disc” in the bottom; and

(iv)  the housing part is largely trapezoidal with the “corners” rounded off, and it is in the shape of an open basket, with a flat bottom.

68.Unlike the design of RD1 which has a number of eye-catching features, I would describe the designs of RD2 and RD3 as simple and clean designs. There are not too many eye-catching features in term of shape, configuration, pattern and ornament.

69.For RD2 and RD3, the eye appeal and the most noticeable feature to an “interested customer” must be a device looking like a basket holding a circular object inside with half of such object exposed outside the basket.  This is the main feature which will influence the choice and selection of the inhaler users.  The rest of the features are hardly noticeable.  If the “interested customer” does notice the generic or not so eye-catching patterns on both faces of the “basket”, those patterns only reinforce the perception that the lower casing looks like a basket.

(ii)  The comparison with the Prior Arts

70.In my judgment, PA2, PA3, PA4, PA6 and PA10 are most relevant in assessing the novelty of RD2 and RD3.  Though there are a few relevant prior acts, I am fully aware that, in making the assessment, it is not permissible to make a mosaic of a number of prior documents for the purpose of attacking novelty.  If the attack on novelty is to succeed, the design must be disclosed in the single prior document.

(a)  RD2 and RD3 against PA2, PA3, PA4 and PA10

71.There are common features in the designs of PA2, PA3, PA4 and PA10.  Like RD2 and RD3, they are simple and clean designs without too many eye-catching features.  They all have a flat base at the bottom of the casing.

72.I first start with the challenge based on PA2. In my judgment, this particular prior art is sufficient to invalidate the registration of RD2.

73.Despite some differences in the designs between RD2 and PA2, one has to take into account the following factors in making the comparison between the two designs:

(i)  Both designs are simple ones without too many eye-catching features, and one would need to use a bit of imagination to figure out that the lower part of the device looks like a basket for both designs.

(ii)  An “interested customer” may not notice that the lower part of the device of RD2 looks like a basket.  In such case, both designs look very similar considering their simple designs without too many eye-catching features.  On the other hand, if the “interested customer” is observant and notices the basket-like lower casing, then they would not have missed the earlier design in PA2 which contains a similar basket-like lower casing.  In both cases, the designs look very similar to them bearing the same concept.

(iii)  The curvings at the upper part of the “basket-like” objects of both designs are very similar if not identical.  As these curvings appear in the central and most eye-catching part of the designs, both designs would give the “interested customer” similar impression involving the use of a “basket-like” object as the main design concept.

(iv)  The simple patterns at both sides of the basket-like objects of both designs are common and generic, and as a result they have very little eye-appeal to an “interested customer”.  Further, it would be easy for the “interested customer” to overlook the differences in the patterns given the simple and generic designs and the similar design concepts.

74.Ms Tam submits that there is difference in the width in the base of both designs.  Due to such difference, she points out that, looking from the side, the design of PA2 is more circular in shape.  RD2 therefore looks more like a basket sitting on a flat surface, whilst the design of PA2 looks more like a bagel sitting on a flat surface.

75.One may argue that, as compared with the design of PA2, the design of RD2 looks more like a basket.  But as I have mentioned above, given the simple, clean and rather generic designs, an “interested customer” who would have the imagination to find that the design in RD2 looks like a basket would not have missed the similar “basket-like” feature in PA2.  After all, different baskets may have slightly different shapes. Further, the flat base at the bottom of both designs, which enables the devices to stand on a flat surface, would reinforce the basket concept of both designs in the eye of the “interested customer”.  With such impression of both simple designs, the “interested customer” probably would not pay attention to the other non-eye-catching features such as the patterns on the sides and the slight angular grooves near the bottom of the “basket” in the design of PA2.

76.In the course of the argument, Ms Tam actually refers the design of RD2 and RD3 as the “shield design”.  Putting myself in the position of an “interested customer”, I do not share the same impression.  Again, it takes quite a bit of imagination to find that the device looks like a shield.  With such simple design, the device can actually look like a lot of different things.  However, if the “interested customer” finds that such design looks like a shield, they would probably find that the design of PA2 also looks like a shield.

77.I would make one more observation here.  I am fully aware that the EU harmonized law concept of “individual character” has no place in Hong Kong law.  However, if the design concept of the design in question is very similar to the one of a prior art and does not have “individual character” in its own, it would be easy for the “interested customer” to overlook some of the minor differences in the designs given the similar design concepts.  Hence, despite the absence of the “individual character” concept in Hong Kong law, it may affect how an “interested customer” would view the differences in the designs facing similar design concepts.  The aforesaid analysis clearly demonstrates the point.

78.For these reasons, in particular those observations mentioned in §73 above, I find that that the design of RD2 only differs in immaterial details as compared with that of PA2, and the registration of RD2 should be revoked for not being “new” at the time of its registration.

79.RD3 only differs from RD2 in that it also claims colour in the statement of novelty.  As mentioned in §§28 and 29 above, colour is prima facie unimportant when considering novelty.  At best, they can be considered as trade variants.  In the present case, there is no evidence whatsoever to support any argument that the mere “green” colour on the cover can confer RD3 any novelty.  RD3 should therefore likewise be revoked.

80.The designs of PA3, PA4 and PA10 are very similar to that of PA2. They are all simple designs without too many eye-catching features.  They all have a flat base in the bottom, and the lower part of the casing looks like a “basket”.  Save for some very minor differences in the patterns on the sides, PA2 and PA3 appear identical.

81.Though PA4 and PA10 may look less like a “basket” due to the inverted U-shaped pattern on the sides, I would still say that these two designs give the same “basket” design concept to an “interested consumer”. Due to the similarities of these designs, the observations I made in respect of the comparison between the designs in RD2 and PA2 also apply to these prior arts.  Based on the same reasons, I find that the challenge against the novelty of RD2 and RD3 based on these prior arts is also successful.

(b)  RD2 and RD3 against PA6

82.By reason of my aforesaid findings, it would not be necessary for me to deal with the other prior arts.  However, for the sake of completeness, I would briefly set out my findings relating to the other prior arts, in particular PA6 which has been singled out by the Plaintiff as the main prior art to challenge the novelty of RD2 and RD3.

83.I do not propose to discuss in details all the differences, in term of shape, configuration, pattern and ornament, between the two designs.  For the present purposes, it suffices for me to say that the design concepts of the two designs are quite different.  Though the design as shown in PA6 has a wider flat base (looking from the side)  as compared with that shown in RD2 and RD3, the design in PA6 does not look like any particular object.  It certainly does not appear as a basket or a shield.  Further, in the same position for the recessed thumb grip in RD2 and RD3, PA6 features a “pusher” to trigger the rotational movement of the body relative to the casing.  There are also 3 vertical ribs of unequal length arranged side by side on each side of the hexagonal central shape, corresponding to the position of the like ribs on the front facing of the outer casing.  Putting myself in the position of an “interested customer”, I would view these patterns as more eye-catching patterns than those generic ones found in PA2, PA3, RD2 and RD3.

84.In making the comparison, I have not attached any weight to the decisions made by the German courts in respect of the interim injunction sought by the Plaintiff against Celon for the alleged infringement of the German Trade Mark.  The Plaintiff alleges that that the sale of the products based on the design of PA6 by Celon was prohibited in Germany because the German courts concluded that “its design was visually too similar to the DISKUS Inhaler”.  However, the comparison here is between PA6 on the one hand and RD2 and RD3 on the other, and not between PA6 and the Plaintiff’s DISKUS Inhaler.  Further, the law to be considered by the German courts in determining the question of infringement of 3-dimensional trade mark is different from the issues in the present case.  Needless to say, both German decisions were only decisions on an interim injunction and its appeal, and the merits of the parties’ case were yet to be finally determined.

(iii)  RD2 and RD3 against PA1, PA5, PA7, PA8 and PA9

85.The remaining prior arts (i.e. PA1, PA5, PA7, PA8 and PA9)  are not relevant in assessing the novelty of the designs of RD2 and RD3.  PA1, PA7 and PA8 are round in shape which is quite different from that of RD2 and RD3. PA5 cannot be described as a clean or simple design and it has more eye-catching features, both of which are quite different from that of RD2 and RD3.  Finally, the overall shape (looking from the side)  of PA9 is so different from the one in RD2 and RD3.  Hence, these prior arts cannot be used to challenge the novelty of RD2 and RD3.

CONCLUSION

86.For the above reasons, I uphold the registration of RD1 but revoke the registrations of RD2 and RD3.  I also make a costs order nisi that there be no order as to costs of this action which shall be made absolute 14 days after the date of the handing down of this Judgment.

Mr Philips B F Wong, instructed by Stephenson Harwood, for the Plaintiff

Ms Winnie Tam, SC and Ms Jasmine Cheung, instructed by Liu, Chan & Lam, for the Defendant

Annex 1

Annex 2

Annex 3