We bring you a guest post from Akshaya Kamalnath, a 4th year law student from the NALSAR University of Law. Here again, I have to apologise to Akshaya for the delay in posting this.
EGYPTIAN GODDESS SAGA: THE ORDINARY OBSERVER TEST TO BE ‘SOLE’ TEST FOR DESIGN INFRINGEMENT
Historical development of US design law:
The ordinary observer test was articulated in Gorham v. White81 U.S. 511 (1871) as follows: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” If this test is met, then the court applies the ‘point of novelty’ test which was first proposed in Kruttschnittv. Simmons118 F. 851, 852 (S.D.N.Y. 1902) according to which “in order to constitute infringement there must be an appropriation of the novel elements of the patented design by the alleged infringing design.” More recently, in Lawman Armor Corp. v. Winner International, LLC & Winner Holding LLC, 437 F.3d 1383 . (Fed. Cir 2006) the court applied the ordinary observer test which was met and then the point of novelty test which failed and thus Lawman Armor’s claim failed. This decision had met with a lot of criticism because it was felt that it would weaken the standard of design patent protection.
Facts of the present case:
In the instant case, Egyptian Goddess, Inc. (EGI) alleged that Swisa had infringed its design patent for a nail buffer, consisting of a rectangular, hollow tube having a generally square cross-section and featuring buffer surfaces on three of its four sides. Swisa’s accused product consists of a rectangular, hollow tube having a square cross-section, but featuring buffer surfaces on all four of its sides. The District Court held against EGI and the U.S. Federal Circuit, on appleal, held against EGI, applying the point of novelty test. However a rehearing en blanc was granted to address several questions including whether the point of novelty test should continue.
Decision:
It was held that the “ordinary observer” test was the “sole test for determining whether a design patent has been infringed.” Also, the burden of production of prior art designs was held to fall on the accused infringer.
While some feel that the situation is an improvement from the hardships imposed by the point of novelty test, others feel that the point of novelty test would have been more logical.
Ramifications on Indian Law:
In India, the current position is based on the decision in GlaxoSmithklineConsumer Healthcare GmbH & Co. Vs. Anchor Health & Beauty care Private Limited, PTC 2004 (29) 72. Here, the court seems to have applied the ordinary observer test although the language used was slightly different. It was held that novelty should be capable of making a design different and distinctive ‘at first sight of the consumer’.
It was also dealt with in a previous case, Samsonite Corporation Vs. Vijay Sales, 73(1998)DLT732. Here the issues were firstly whether the Designs Act was applicable or not and secondly whether there was infringement. The first issue was decided in the affirmative. Regarding the second issue, the court held that in case of the first model (2450 Ciera), the differences in the Citation were obvious and hence there was no infringement. However, in the case of the second model, TRX, the court ruled that the differences were minor and would only be noticeable to an expert but not to the average customer and hence there was infringement. Thus here too, the ‘ordinary observer’ test has been applied although the terminology of the Court is ‘average customer.’
Thus the Egyptian Goddess v. Swisa decision is in line with the Indian position. The English position too is quite similar. In the case, SommerAllbert(UK) Ltd. V. Flair Plastics Ltd. (1987) RPC 599, the court held that ‘even a customer with an imperfect recollection will not be able to confuse’ the two designs.
Thus, although the court had not said that the sole test would be ‘distinctiveness at the sight of the consumer’, the ‘point of novelty’ test had not been applied, either. After the current Egyptian Goddess decision, it will be difficult for future litigants to persuade the court to bring in the ‘point of novelty’ test on the basis of US law.
was there, by any chance, an amicus brief submitted by IPO?
Very relevant post; and the choice of case too is apt because i remember now that the amicus brief (extremely well-researched) submitted by IPO in this case was widely acclaimed and was considered to be pivotal in influencing the judgment as well as setting right a well-established and oft-repeated historical wrong; it heavily critiqued the point of novelty test on the basis that although the same criteria has been prescribed by 35 USC in judging obviousness of a design patent and a utility patent, the standards of application rightly ought to differ, but had been subverted for a very long time in favour of infringers. IPO pointed out that the test of novelty cannot be merely ticking off a scorecard between prior art elements and the “novel” elements of the new and original design. It was also pointed out that the predominantly visual character of a design patent distinguishes it from a utility patent.
The brief also points, very importantly at that, to the adverse reversal of burden of proof which resulted on account of the application of the PON test since the patentee had to first prove that he hadnt appropriated any aspect of prior art and then go on to prove infringement.
Finally, the amicus brief also beautifully charts the gradual yet significant shift in the test of infringement of design patents; it shows how misinterpretation and short-sighted application of precedents could lead to a systemic rot. This is important because such judgments have been the primary reason why increasingly trademark, rather trade dress protection has been used to protect designs instead of design patents. An article by Gerard Magliocca titled “Ornamental Design and Incremental Innovation” elucidates on the cost-benefit analysis of filing and maintaining a design patent (& staving of marauding infringers) vis-a-vis trade dress protection.
Speaking of Egyptian goddeses and gods, check this YouTube film