DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS**

Re: Request for examination of design registration numbers 340103 and 340245 (design numbers 201115323 and 201115193) by Kmate Pty Ltd both in the name of David Mills

2017 ADO 1

Designs Act 2003 (Cth) - hearing pursuant to section 67(3) - examination requested under section 63(1) by person other than the owner - First Design not distinctive over prior art base - design revoked - Second Design distinctive over prior art base - examination certificate to issue

1. In 2011, David Mills ('the Owner') filed two applications under the Designs Act 2003 (Cth) ('the Act'). Each application disclosed a single design (together, 'the Designs'). Having passed the minimum filing requirements and formalities checks, the Designs were entered on the Register of Designs with the following particulars:

Product Name: Two stroke combustion chamber and porting

Statement of Newness and Distinctiveness: Newness and distinctiveness resides in the shape of the combustion chamber and ports.

Statement of Newness and Distinctiveness: Novelty resides in the shape and configuration of the charging ports as depicted.

1. On 2 February 2012 the Owner requested the Designs be examined. No adverse findings were raised, and certificates of examination issued in March and April of 2012.
2. A second request for examination of the Designs was filed on 1 May 2012 by Kmate Pty Ltd ('the Requestor'). The request was accompanied with material purporting to be relevant to the newness and distinctiveness of the Designs, comprising two declarations by Scott Gladstone (with exhibits), one executed in relation to each.
3. The Owner was given a copy of the Mr Gladstone's declarations, and invited to pay the owner's portion of the examination fees in accordance with reg 11.05 of the Designs Regulations 2004 (Cth) ('the Regulations'). Those fees were paid on 19 July 2012.
4. Examination of the Designs then commenced for a second time, resulting in a pair of notices titled 'Notification of Intention to Certify' dated 3 September 2012. The notices set out the examiner's findings under s 19 of the Act for the Designs, indicating that the examiner was satisfied that no grounds for revocation had been made out, and that certificates of examination would issue unless the Requestor requested to be heard within a month.
5. In response to these notices from the examiner, on 2 October 2012 the Requestor filed a further submission enclosing a second pair of declarations by Mr Gladstone (with exhibits). Annexed to these new declarations were two physical specimens of engine cylinders.
6. The Requestor's further submissions appear to have been persuasive. On 30 November 2012 an examiner raised adverse examination reports against the Designs, alleging that the engine cylinder specimens in combination with some supporting material rendered the Designs not distinctive at their priority dates.
7. The Owner responded to the examination report on the Second Design on 28 and 29 May 2013, and to the First Design on 29 May 2013. These responses included declarations and unsworn statements by the Owner and mechanic and race driver Bill Nabhan.
8. The examiner's decision in both cases was to issue another 'Notification of Intention to Certify' dated 10 July 2013. The Requestor, presumably unconvinced by the accompanying statements of reasons, asked to be heard on both examinations by way of twin letters filed on 9 August 2013.
9. The practice and procedure for the hearing, including the filing of evidence, was set down in a series of directions dated 24 October 2014. Both parties filed evidence in support, but only the Owner filed evidence in answer to the Requestor's evidence in support.
10. Once the parties had filed their evidence, they were invited to nominate whether they wished to be heard in person or by way of written submissions. The Requestor asked to be heard by way of written submissions, and the Owner did not respond. The parties were then given a month to file written submissions, which both duly filed.

1. A design, in relation to a product,[1] means the overall appearance of the product resulting from one or more visual features (such as shape, configuration, pattern and ornamentation) of the product.[2]
2. Section 65(1) of the Act requires the Registrar to consider whether there is a ground for revoking registration of a Design. Section 65(2)(a) of the Act provides that a ground for revocation will exist if the Design is found to not be a 'registrable design', which in turn is defined in s 15 of the Act:

(1) A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.

(2) The prior art base for a design (the designated design) consists of:

• (a) designs publicly used in Australia; and
• (b) designs published in a document within or outside Australia; and
• (c) designs in relation to which each of the following criteria is satisfied:
  • (i) the design is disclosed in a design application;
  • (ii) the design has an earlier priority date than the designated design;
  • (iii) the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.

Note: For document , see section 2B of the Acts Interpretation Act 1901.

1. In order to avoid the ground of revocation in s 65(2)(a) of the Act a design must be both new and distinctive when compared to earlier designs. The terms 'new' and 'distinctive' are defined in s 16 of the Act:

16 Designs that are identical or substantially similar in overall impression

(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.

(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).

(3) Subject to paragraph 15(2)(c), the newness or distinctiveness of a design is not affected by the mere publication or public use of the design in Australia on or after the priority date of the design, or by the registration of another design with the same or a later priority date.

1. The 'new' limb is a filter for designs that correspond exactly in appearance. The Requestor has not alleged that the Designs are not new, nor do I see anything in the evidence that is identical to either. It is therefore the 'distinctive' limb that is relevant to the present matter. Deciding whether two designs are substantially similar in overall impression requires the weighing of several factors set out in s 19 of the Act, the relevant parts of which are reproduced below:

19 Factors to be considered in assessing substantial similarity in overall impression

(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.

(2) The person must also:

• (a) have regard to the state of development of the prior art base for the design; and

• (b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:

  • (i) have particular regard to those features; and
  • (ii) if those features relate to only part of the design--have particular regard to that part of the design, but in the context of the design as a whole; and

• (c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and

• (d) have regard to the freedom of the creator of the design to innovate.

(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.

(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).

1. The parties did not submit new information in the evidence that was filed in the lead up to the hearing. Rather, they re-filed declarations and other material that was identical to what had already been filed during the examination of the Designs.
2. I have set out in the tables below the evidence that was filed pursuant to the 24 October 2014 directions:

Scott Gladstone, Managing Director of the Requestor

Scott Gladstone, Managing Director of the Requestor

Scott Gladstone, Managing Director of the Requestor

Scott Gladstone, Managing Director of the Requestor

1. The dates in the tables above are out of chronological order because several declarations made during the course of examination were resubmitted unchanged in the lead up to the hearing (such as the declarations of Mr Gladstone). Other declarations consist of information that was originally presented to the examiner unsworn, and so have been refiled as sworn declarations significantly later (such as the declarations of Mr Nabhan).
2. Gladstone 1 and Gladstone 3 are similar in many respects. Both commence by introducing the declarant and the Requestor, discuss the nature of the product to which the Designs relate, introduce some prior art, and conclude by making submissions in relation to the similarity of the prior art to the Designs. Mr Gladstone declares in both that cooling fins 'often vary depending on the product that the engine cylinder is being fitted to' and more specifically that their 'number shape and configuration...[are] often altered to ensure that the engine cylinder will properly fit the machine product and allow for sufficient cooling...' The material difference between these two declarations is the prior art included, which I have set out separately below alongside my discussions of Gladstone 2 and Gladstone 4.
3. According to the Requestor's first pair of declarations, Mr Gladstone has been the Managing Director of the Requestor since 2005. The Requestor imports 'a wide variety of products' into Australia, including engine cylinders of the type to which the Designs relate. The products to which the Designs relate are a component of a class of small-displacement single cylinder two-stroke engines known as 'cateyes'. The assembled engines are used in a wide variety of machines, including garden trimmers, post-hole diggers, chainsaws and mini-bikes.
4. Mills 2 and Mills 4 are duplicate declarations. They introduce the Owner and Mills International Trading Pty Ltd, of which the Owner is sole director. The Owner declares that Mills International Trading Pty Ltd sells chainsaws and similar tools, and that he has personally dismantled and examined 'all competitor products sold by competitors here and overseas' from 2006 to 2013. The Owner also declares that he 'carried out extensive research in the lead up to finalising our port designs' which have been incorporated into the Designs with a view to creating more efficient engines.
5. The Owner further declares that during all of this research, prior to 15 November 2011 (being the priority date of the Second Design) he 'did not come across any cylinder matching those in [Gladstone 1, Gladstone 2, Gladstone 3 or Gladstone 4]'. Presumably based upon this research, the Owner concludes that 'the evidence presented by [the Requestor] does not form "Prior Art" in relation to [the Designs]'. I accept at face value that the Owner conducted research before the priority date of the Second Design, but not the conclusion he seeks to draw from it. His personal experience alone would be an unsteady basis upon which to decide on the state of the prior art base.
6. Unlike the Owner's earlier declarations, Mills 1 and Mills 3 are not identical but they still share some aspects. Both provide a very similar detailed explanation of how small changes to the ports will alter many characteristics of an engine. Mills 1 and Mills 3 mainly consist of an intricate critique of the Requestor's evidence. However, as conceded in a pair of letters from the Owner dated 22 May 2015 this information is submissions rather than evidence.
7. Nabhan 1 and Nabhan 2 are near identical. They both introduce the declarant, a mechanic and race driver who has built, modified and tuned vehicle engines (including 2-stroke) for 30 years. Mr Nabhan states that small changes to the ports of a 2-stroke engine can make large differences to the way it runs. Nabhan 1 concludes by comparing Exhibit SG-12 to Gladstone 2 with the representations of the First Design. Nabhan 2 similarly compares Exhibit SG-10 to Gladstone 4 ('the SG-10 prior art') with the Second Design. In both cases Mr Nabhan declares that he 'can immediately see differences to the...ports which are likely to make large difference to power/consumption/exhaust output', apparently concluding on that basis that the designs in comparison are 'NOT substantially similar in overall impression' (emphasis in originals).

Requestor's Prior Art in Relation to the First Design

1. Exhibit SG-3 to Gladstone 1 includes plan views of two cateye engine cylinders (below). Mr Gladstone declares these were imported into Australia by the Requestor, but does not indicate when. Both of these pages are stamped with the some Chinese script and 'WUYI ZHONGJI GARDEN MACHINERY MANUFACTURING CO., LTD'. Proximate to this stamp is some handwriting in Chinese and in English, the English portion of which reads: 'Designed and manufactured by our company'.

1. Exhibit SG-2 to Gladstone 1 consists of a letter from another Chinese manufacturer, Zhejiang Hengjia Industry & Trade Co., Ltd. Given a generous reading, the letter might be taken to indicate that products shown in documents attached to the letter have been exported to Australia since 2010. Much of the text in these attachments is in Chinese script without translation. There are two cateye engine cylinders among the attached pages, which are reproduced below.

1. Exhibit SG-4 to Gladstone 1 ('the SG-4 prior art') consists of three printouts from the 'Wayback Machine'.[3] These are point-in-time snapshots of web pages, all from well before the priority date of the First Design. The relevant images from those pages are reproduced below:

1. Exhibit SG-5 to Gladstone 1 shows three screenshots of videos uploaded to 'YouTube' before the priority date of the First Design. The videos themselves are annexed to Gladstone 1 as Exhibit SG-6. Images of cateye engine cylinders appearing in the Exhibit SG-5 screenshots are reproduced below:

1. Exhibit SG-7 to Gladstone 1 provides further views of one of the engine cylinders in the Gladstone 1 SG-3 art aside representations of the First Design.
2. Gladstone 2 follows a similar structure to Gladstone 1. After some introductory paragraphs it offers up some prior art and then moves on to submissions on the newness and distinctiveness of the First Design. The substance of Gladstone 2 commences with a pictorial and textual explanation of the operation of an engine cylinder, set out in Page 1 of Exhibit SG-8. Page 2 of this exhibit shows examples of variations of engine cylinders of differing capacity. Mr Gladstone declares that all of the variants shown on Page 2 are earlier than the priority date of the First Design. Page 3 of the same exhibit places an image of an engine cylinder from a multi-function pole saw next to one of the representations of the First Design. Exhibits SG-9 to SG-11 to Gladstone 2 provide evidence of the ordering, shipping and on-selling of the multi-function pole saws. This series of documents show a shipment invoice issued in China, the movement of a shipping container from Ningbo to Melbourne, Australian Customs records of the shipment, and finally a tax invoice for a single unit sold by the Requestor to a third party in Australia. All of these documents bear dates from before the priority date of the First Design.
3. It was the physical specimen titled Exhibit SG-12 to Gladstone 2, in combination with the shipping information outlined above, that were cited in the adverse examination report against the First Design. I have set out below the image from Page 3 of Exhibit SG-8 to Gladstone 2 beside a comparable image of Exhibit SG-12 to Gladstone 2. These are not the same engine cylinder. It is therefore unclear to me which of these Mr Gladstone declares was a component of the multi-function pole saws that shipped from Ningbo to Melbourne before the priority date of the First Design.

Requestor's Prior Art in Relation to the Second Design

1. The Requestor has provided fewer examples of prior art in relation to this design. The first is in Exhibit SG-3 to Gladstone 3, the relevant images from which are reproduced below:

1. The same English and Chinese writing as was present on Exhibit SG-3 to Gladstone 1 appears on the photograph above. Mr Gladstone declares that the Requestor has imported products containing the above engine cylinder since September 2011. To support this, he has annexed at Exhibit 2 to Gladstone 3 a tax invoice for a quantity of gasoline chain saws dated 30 September 2011. The invoice was issued to the Requestor by Zhuhai Zhihuan Trading Co., Ltd.
2. Exhibit SG-4 to Gladstone 3 consists of two more printouts from 'The Wayback Machine', both from before the priority date of the Second Design. The relevant images from this exhibit are reproduced below:

1. Gladstone 4 follows the familiar structure of introduction, prior art, submissions. Most of the documents annexed concern the shipping details of the SG-3 prior art. Exhibits SG-6 to SG-8 to Gladstone 4 document a shipment of chainsaws from Ningbo to Melbourne, and the subsequent sale of a single chainsaw from the Requestor to a third party in Melbourne, all before the priority date of the Second Design. Exhibit SG-9 to Gladstone 4 shows the SG-3 prior art from a perspective view alongside a representation of the Second Design. Again, it was the SG-10 prior art in combination with the abovementioned shipping details which compelled the examiner to issue an adverse report against the Second Design. I have set out in the table below the image of the SG-3 prior art as it appears in Exhibit SG-9 to Gladstone 4 next to a comparable image of the SG-10 prior art. Although the image of the SG-3 prior art from Exhibit SG-9 to Gladstone 4 is poor quality, it is clear that these two images are of the same engine cylinder.

1. Both parties have made submissions about the qualifications of the three declarants. Beginning with the Requestor's evidence, it submits that Mr Gladstone, as a buyer of the product to which the Designs relate, is a person with the level of familiarity required to meet the standard of the informed user. The Owner in turn questions Mr Gladstone's familiarity with the product by pointing to aspects of the Requestor's evidence which he says is irrelevant and/or supports the Owner's cases.
2. The Owner submits that Messrs Mills and Nabhan have expertise in relation to two stroke engine cylinders, based upon their experience outlined in my discussion of the evidence above. The Requestor submits that no weight be given to the conclusions in Mills 2 and Mills 4 that none of the Requestor's evidence is of prior art. As I have already indicated above, I am not convinced by that aspect of Mr Mills' declarations. Beyond this specific issue, the Requestor has not made any submissions about Mr Mills' qualifications.
3. Turning to Mr Nabhan's evidence, the Requestor asserts it is of little probative value because he 'can properly be described as an expert', and 'the informed user is not an expert'. The Requestor also notes that Mr Nabhan's evidence 'is devoid of the rigour expected of a credible expert report', and that the views expressed therein 'are entirely conclusory'. Reading through Nabhan 1 and Nabhan 2 I must agree with the Requestor's characterisations, though this does not lead me to entirely disregard these declarations. Despite their lack of detail, both of Mr Nabhan's declarations corroborate a central theme found in Mills 1 and Mills 3: small differences to the ports can alter the characteristics of 2-stroke engines. On this issue, the Requestor submits that '...functionality is relevant to the question of distinctiveness only insofar as that functionality is embodied in a visual feature...'
4. Mills 1 and Mills 3 provide a line-by-line critique of the Requestor's declarations and their exhibits. Rather than summarise them here, I have referred to the relevant parts of these submissions below. There is however one issue from Mills 3 that I will address at this point. The Owner contends that 'there is no evidential link between [the SG-10 prior art] ... and goods imported by [the Requestor] during 2011 and 2012.' Mr Gladstone declares that the attached Exhibit SG-9 contains an image of the engine cylinder from the chain saws which were imported by the Requestor as evidenced in the shipping documentation in Exhibits SG-6 to SG-8. Mr Gladstone further declares that the SG-10 prior art is a physical sample of that same engine cylinder. These declarations seem reasonable on their face, and there is nothing of substance in the materials before me that might contradict them. Given this, I consider that Mr Gladstone's sworn statements form a sufficient link between the shipment and the physical specimen.
5. In relation to the First Design, the Requestor relies upon all of the instances of prior art from Gladstone 1 and Gladstone 2 reproduced in my discussion of the evidence above. It has drawn specific attention to one of the images found in the SG-4 prior art, which it submits is 'close to identical'. It follows that if I find the Owner's design new and distinctive over this image, then none of the rest of the Requestor's prior art is likely to assist it. Similar can be said for the opposite finding - if I find that this image deprives the Owner's design of novelty, it would be unnecessary to consider any other prior art. For the purposes of a side-by-side comparison, this image is reproduced below beside a comparable representation of the First Design.

1. Turning to the Second Design, the Requestor has referred to the physical specimen, the SG-10 prior art, as being 'close to identical' to the Owner's design. Based on the same logic as above, I will focus on this example of prior art. Below is an image of that exhibit beside a comparable representation of the Second Design.

Discussion of Section 19

1. Since the Designs relate to the same product, it follows that they are subject to the same standard of the informed user[4] and the same constraints on the creator.[5] Their priority dates are just over two weeks apart, so they also share a near identical prior art base.[6] Their statements of newness and distinctiveness[7] are also quite similar in effect. I therefore discuss those four factors below in relation both of the Designs together. I then consider the amount, quality and importance of any similarities each of the Designs has with the close prior art.[8]

1. As mentioned in my summary of the submissions, the Requestor has put it that 'the informed user is not an expert'. In making this submission it referred to the following passage:

In summary, the standard of the informed user is an objective one. In this case, the assessment must be that of a user of ladies' garments, which would include a potential purchaser, either in retail sales (such as a buyer for a fashion store) or at the ultimate consumer level. A designer or manufacturer of ladies' garments is not, on account of design or manufacturing knowledge alone, an informed user. The notional user must be informed, in the sense that the user is familiar with ladies' garments. The informed user is not an expert, but must be more than barely informed. The focus for consideration is on eye appeal and not on internal or less visible manufacturing features.[9]

1. The above discussion is not the final word on the standard of the informed user. A more recent decision at the same level, having reviewed the Redberry decision went on to state:

Importantly, however, s 19(4) does not impose a standard higher than familiarity. The standard fixes the appropriate level of generality (or particularity) at which a design is to be assessed...This may be a reason for saying that the notional person is not a design expert, lest it be thought that a standard of design evaluation more rigorous or exacting than familiarity is involved. However, in my view, it is not a reason for excluding, necessarily, a design expert from being a person having the required familiarity.[10]

1. In arriving at the above conclusion, Yates J noted that the position taken in Redberry was influenced by decisions from the United Kingdom. The legislation in that jurisdiction stresses 'the dual character of the notional person - who must not only be informed, but a user'.[11] However, s 19(4) of the Act ascribes but one character to the notional person: familiarity with the product (or similar products) to which the design relates. To import a 'user' requirement into the informed user standard under the Act would be to beg the question, in effect 'construing, impermissibly, the words of a definition by reference to the term defined'.[12] The standard of the informed user in Australia and in the United Kingdom are therefore not the same, and so the requirement in United Kingdom law that this notional person not be an expert is equally inapplicable to the Act. Yates J also confirmed the ordinary meaning of s 19(4) in extrinsic materials, quoting the report to which the Act responds:

...The concept of the informed user is flexible enough to incorporate where relevant the views of consumers, experts, specialists and skilled tradespersons. At the same time it does not, and should not, require that the expert or consumer be the test in all cases. The informed user would be defined as a person who is reasonably familiar with the nature, appearance and use of products of the relevant kind...[13]

1. The product names for the Designs are differently worded, but reading them in context of their respective representations, it is clear that they are in relation to the same product or at the very least, extremely similar products. The Second Design calls the product a 'two stroke motor block', whilst the First Design calls it 'two stroke combustion chamber and porting'. The former product name strikes me as more accurate, 'two stroke motor block' being an adequate means of describing the thing that is shown in the representations. The latter product name, in contrast, relates to only part of the thing. I therefore take this reference to the 'combustion chamber and porting' in relation to the First Design to be a superfluous attempt to draw particular attention to those areas of the product. I say 'superfluous' because the statement of newness and distinctiveness already requires that particular attention be paid to those areas.
2. The product to which both of the Designs relate is therefore not itself a variety of engine, but rather a component of one. The class of persons that would fall within the standard of the informed user for this product must therefore be somewhat smaller than that of an assembled cateye engine, and significantly smaller than for the various consumer goods which can incorporate a cateye engine. It follows that the appreciation of the Designs from the perspective of the general consumer would not be relevant here. Quite unlike the position in Redberry which concerned a design for a dress, people familiar with this type of engine part must necessarily have an appreciation of the shape and configuration of the internal features. They might have gained this familiarity either as a supplier who designs or manufactures cateye engine parts (or parts for similar small displacement two stroke engines), as an intermediary who distributes or markets the parts, or as an end user who assembles, modifies or maintains cateye engines (or similar).
3. Mr Nabhan has significant experience building and maintaining engines including small displacement two-stroke engines and so would fall within the last category. Mr Mills, having researched and designed cateye engine cylinders falls within the first category. Given his lengthy experience as an importer and distributor of cateye engine cylinders, I am satisfied that Mr Gladstone is also familiar with the product. Mr Gladstone does not appear to carry the technical expertise as the other two declarants, but this does not necessarily diminish his evidence. The standard of the informed user has been cast broadly so that neither the expert's nor the layperson's understanding of the visual features must be preferred over the other.
4. Mr Gladstone submits that 'the informed user would ... consider: (i) how [a replacement engine cylinder] would work within the two-stroke engine's existing features; (ii) the shape and configuration of the combustion chamber and charging ports; (iii) whether the engine cylinder had attachment points for replacement into the two-stroke engine; (iv) recommendations from user guides, magazines, internet sites, friends and other users; (v) the reputation of the manufacturer; (vi) the quality of the materials and workmanship; and (vii) the cost of the product.' The Owner's only contention with this list is that it does not mention the informed user's judgement of 'the likely "Performance" (power output, fuel consumption and pollutant output) of the cylinder head when installed onto an engine.' Whilst Mr Gladstone did not refer to this judgement specifically, I consider that it is captured in his list, specifically in points (i) and (ii). I accept Mr Gladstone's points (i) to (iii) on their face, but must discard points (iv) to (vii) since none of them necessarily relate to the visual features of the product.
5. It is apparent from these submissions of Messrs Mills and Gladstone that internal features of engine cylinders are of importance to the informed user. Whilst not explicitly stated by Mr Nabhan, by focusing on the shape and configuration of the ports, his declarations offer further corroboration for this notion. Beyond this supporting point, the evidence of Mr Nabhan is less helpful. He merely states that he believes the Designs are not substantially similar in overall impression to any of the Requestor's prior art, without explanation. Mr Mills' evidence and submissions on the other hand are detailed, relying upon patent documents, a textbook on internal combustion engines, other supporting materials and offering explanations supported by marked up images of the Designs and a selection of the Requestor's prior art.
6. Mr Gladstone seeks to draw the emphasis away from 'the number, shape and configuration' of the cooling fins that appear on the external walls of the product, stating that they will 'often vary depending on the product that the engine cylinder is being fitted to.' Despite brief protestations from the Owner that Mr Gladstone's submissions on this issue are somehow inconsistent, nothing in the Owner's evidence or submissions provides an alternative account.

1. Given the number of similar designs provided in evidence by the Requestor, it is uncontroversial to conclude that the prior art base for cateye engines is highly developed. I also note the examiner came to the same conclusion in the 10 July 2013 statements of reasons, and neither party has offered an alternative view. A consequence of this finding is that smaller differences to the prior art, provided they are of sufficient importance to the informed user,[14] may be sufficient for a finding of distinctiveness.[15]

Freedom of the creator of the design to innovate

1. The product is a major component of a two-stroke engine, so it can be safely assumed that the laws of thermodynamics imposed certain constraints upon the creator of the Designs. The most obvious area of constraint appears to be the combustion chamber and charging ports. For example, Mills 1 and Mills 3 incorporate an extract from a textbook authored by a professor of automotive engineering at the Massachusetts Institute of Technology[16] discussing the design of two-stroke cylinders. The extract notes that the various design 'requirements conflict with each other to a considerable extent', and therefore 'the design of a two-stroke cylinder requires considerable compromise.'
2. Mr Nabhan's twin declarations directly support the above proposition:

The shape and configuration of ports of 2-Stroke engines have a major effect on how well the engine runs.

If I make even a slight modification to the ports then it is normal to see a dramatic difference in the way the engine runs.

When done in the right way, small modification may make a huge improvement in power band range, power output, fuel consumption or exhaust output.

1. Since slight changes will impact engine performance, the freedom of the creator to innovate on these areas must in turn be highly constrained. Accordingly, the informed user can be taken to expect certain visual features to be present in the ports, and would instead be drawn to the visual features of other areas of an engine cylinder.
2. In contrast to the internal features, Mr Gladstone notes the 'variable number, shape and configuration' of the external cooling fins, observing that they 'often vary depending on the product that the engine cylinder is being fitted to.' Given that the fins cover much of the external surface of the Designs and the prior art alike, it is likely that large tracts of the external walls are areas in which the creator was relatively free to innovate, provided they 'allow for sufficient cooling'. On this basis I consider that the external features of the Designs are more significant when considering the freedom of the creator to innovate.

1. This factor requires that I pay particular attention to the 'charging ports' of the Second Design and the 'combustion chamber and ports' of the First Design.

Amount, quality and importance of the similarities - the First Design

1. The Owner submits that the First Design differs to the SG-4 prior art in that it his design has shorter ports, is rounded at the point where the port meets the combustion chamber and is also rounded where the port wall meets the port base. These are illustrated in the images below:

1. The Owner has made no submission about any area of this particular item of the Requestor's prior art other than the three mentioned above. For its part, the Requestor submits that 'overall, [these two designs] are close to identical, even the number and location/configuration of the cooling fins is the same'. The parties therefore appear to largely agree on the points of similarity and difference (and I agree with their combined assessment). The contention is whether the differences the owner has identified are sufficient for a finding of distinctiveness. Section 19(2)(c) requires that I look to the 'amount, quality and importance' of those similarities.
2. The 'amount' of similarity is, simply put, great. It encompasses all of the visual features of these two designs, apart from the three small points of difference highlighted by the Owner. The 'quality' of the similarities includes visual features of areas which the creator was relatively free to innovate. I have previously noted the cooling fins fall in this category, but I also note that the shape and configuration of the air intake and the exhaust appear to be identical. I understand from the submissions and evidence of the parties, as well as the statement of newness and distinctiveness, that for segments of the class of persons that would meet the standard of the informed user, the 'importance' of these (mostly external) areas of similarity may be less than the internal features. The importance of the external features to the informed user, however, is not nil. For example, as I have noted above, the relatively high constraint on the creator of the design in relation to the internal features can cause the informed user to assume those parts will function (because they must) and give greater consideration to other areas as design features, such as the aforementioned cooling fins.
3. Mills 1 observes that 'port differences, even if they are seemingly small to the unpractised eye could result in changes to engine performance large enough to make engine designs non-workable or lacking performance to the extent of being commercially unviable.' Building on this point, the Owner submits that the three small areas of visual difference he has identified in the ports are important because they could alter the performance of the engine in which it is to be installed, but does not offer any further explanation. This image from the SG-4 prior art appeared on a website offering it for sale, so it seems to me unlikely that it doesn't work or is otherwise 'commercially unviable'. For its part, the Requestor submits that 'functionality is relevant...only insofar as that functionality is embodied in a visual feature...' adding that the differences identified by the Owner are 'almost inscrutable'.

Distinctiveness - conclusion on the First Design

1. The state of the prior art base is such that smaller visual differences, provided they are somehow significant, may be sufficient for a finding of distinctiveness. The Owner's evidence indicates that some persons that would fall within the standard of the informed user would pick up on the three small differences that the Owner highlights. However, I have found that others within this class are likely to afford greater weight to more readily changeable features, in assessing whether two engine cylinders are substantially similar in overall impression. This is supported by my finding that the shape and configuration of the ports and combustion chamber are, to a great extent, dictated by function. Section 19(1) requires that I give more weight to similarities than differences in the overall assessment, and this overarching requirement cannot be negated by the narrow focus of the statement of newness and distinctiveness. Even where a statement of newness and distinctiveness identifies only part of the design, that part must be given particular regard in the context of the design as a whole.[17] In that context, it is necessary to recall that large areas of the First Design appear identical to this image from the SG-4 prior art.
2. It is for me to be satisfied as to the significance (or otherwise) of the visual features of the Designs,[18] yet the Owner has not provided me with cogent evidence of the significance of the differences he has sought to highlight. The evidence he has led on this point essentially asks me to take Messrs Nabhan and Mills at their word that the differences outweigh the similarities. Without, for example, some explanation as to how and to what degree these visual differences would result in different engine performance, it is impossible for me to reasonably conclude that these small visual differences are as significant as the Owner would have it.
3. Given its overall similarity to a publication in the prior art base, I find that the First Design was not distinctive at its priority date.

Amount, quality and importance of the similarities - the Second Design

1. With respect to the Second Design, the Owner again is singly focused on internal features, attaching several illustrations of emphasising certain differences to the SG-10 prior art. Those illustrations are reproduced below:

1. In his explanation of the above images, Mr Mills submits that the 'port design [of the Second Design] is proportionately thin which prevents the air/fuel mixture from expanding too much in the cylinder.'

1. In relation to the above images Mr Mills submits that the Second Design 'features a "squared" design of semi-enclosed port area', which 'differs from [the SG-10 prior art] which is of a fully rounded design'. Mr Mills submits that this squared port will 'improve the flow of the fuel/air mixture and also pressure inside the combustion chamber'.

1. Mr Mills submits that the use of a thinner sub-port as highlighted above will result in higher pressure in the combustion chamber.

1. In relation to this final set of images, Mr Mills submits that the narrower and squared port divider provides better support for the piston and improves the separation of the sub-ports. He does not attempt to explain how this is likely to alter the performance of an engine built with this component.
2. The Requestor has sought to emphasise apparent similarities in broad terms:

While there may be slight differences between the prior art and the representations of [the Second Design], many of the claimed differences are almost inscrutable and are exaggerated by the notations which, in many cases, seek to remedy poor quality representations. Overall [the Second Design] and [the SG-10 prior art] are close to identical with the similarities far outweighing the differences.

1. The quality and importance of the areas of similarity are as they were with the First Design, but the overall amount of similarity is less.
2. As the Owner has repeatedly stressed, there are several points of difference in the internal visual features of the Second Design when compared with the SG-10 prior art. There are in all more areas of difference to the internals than was the case in the First Design, but again, these result in only slight visual differences. However, the Owner has gone beyond merely identifying visual differences in this instance, offering his analysis of the effect of each. That is, the Owner has said it is possible to determine from a visual inspection that the Second Design offers a denser fuel/air mixture, greater flow rate through the ports and a higher combustion chamber pressure than the SG-10 prior art.
3. This factor of s 19 is not limited to visual features that the parties have chosen to focus on, nor is it limited to features identified in the statement of newness and distinctiveness. There are also similarities and differences in external visual features. Externally, both clearly share many visual features but there are a few notable departures. Prominent among the differences in external visual features is the uppermost cooling fin as can be seen in the three images above. In the SG-10 prior art the fin does not extend out to the four corners of the product, whilst in the Second Design it does. On a closer inspection several other differences to the shape and configuration of the cooling fins become apparent, such as a one centimetre notch in the sixth fin down in the SG-10 prior art which is not present in the Second Design.
4. Another external difference can be seen in the flange above the uppermost cooling fin. The front and rear elevations of the Second Design show that the flange has a lip all the way around, while from those same perspectives the flange on the SG-10 prior art is flush. Finally, the shape of both the air intake and the exhaust port are also markedly different between these two designs.

Distinctiveness - conclusion on the Second Design

1. The state of the prior art base is again such that smaller visual differences may be sufficient for a finding of distinctiveness. In contrast to the First Design, the evidence provided by the Owner permits me to be reasonably satisfied that several of the visual differences to the internal features in the Second Design when compared with the SG-10 prior art, although slight, would alter the performance of an engine built using these engine cylinders. The creator was relatively freer to innovate with regard to the external features, and I have identified several points of difference in that regard. The specialised nature of the product combined with the crowded prior art base means that these differences would result in a substantial difference of overall impression from the perspective of a person familiar with two-stroke engine cylinders. I therefore find that the Second Design was distinctive at its priority date.

1. Having found that the First Design is not distinctive over the prior art, it follows that the First Design is not registrable and a ground for revocation has been made out. There does not appear to be any amendment to the register that would remove this ground for revocation.
2. The design will be revoked one month from the date of this decision. If the Registrar of Designs has been served with a notice of appeal from this decision before that time, I direct that revocation shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this examination should be in accordance with the Court's order or direction.

1. Having found that the Second Design is distinctive over the prior art, it follows that examination of the Second Design has been completed.
2. A certificate of examination in relation to the Second Design will issue one month from the date of this decision. If the Registrar of Designs has been served with a notice of appeal from this decision before that time, I direct that the certificate of examination will not issue until the appeal has been withdrawn or discontinued. Otherwise the disposition of this examination should be in accordance with the Court's order or direction.

1. Both parties have sought an award of costs. The ordinary rule is that costs follow the event. Since both parties have been equally successful, I consider it appropriate that the parties bear their own costs. I therefore decline to award costs.

[1] Designs Act 2003 (Cth) s 8.

[2] Designs Act 2003 (Cth) ss 5, 7(1).

[4] Section 19(4).

[5] Section 19(2)(d).

[6] Section 19(2)(a).

[7] Section 19(2)(b).

[8] Section 19(2)(c).

[9] Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588; (2008) 173 FCR 450, 457 [26] ('Redberry') (emphasis in original).

[10] Multisteps Pty Ltd v Source and Sell Pty Ltd [2013] FCA 743; (2013) 214 FCR 323, 337-8 [67] ('Multisteps') (citations omitted).

[13] Australian Law Reform Commission, Designs, Report No 74 (1995) 59 [5.17] (emphases added).

[14] Manitowoc Foodservice Companies LLC [2013] ADO 2.

[15] Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.

[16] Charles Fayette Taylor, The Internal-Combustion Engine in Theory and Practice (MIT Press, 2nd revised ed, 1985) vol 1.

[17] Section 19(2)(b)(ii).

[18] Keller v LED Technologies Pty Ltd [2010] FCAFC 55; (2010) 185 FCR 449, 460-1 [36]-[37].