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Best Berries (NZ) Ltd v Phillip Greig and Phil Greig Strawberry Gardens Limited [2014] NZIPODES 1 (31 July 2014)

Last Updated: 12 August 2014

IN THE INTELLECTUAL PROPERTY OFFICE OF NEW ZEALAND

[2014] NZIPODES 1

IN THE MATTER of the Designs Act 1953

AND

IN THE MATTER of Design Application No 414220 in the name of Best Berries (NZ) Ltd

Registered Proprietor

AND

IN THE MATTER of an application for cancellation of Registration of a Design by Phillip Greig and Phil Greig Strawberry Gardens Limited

Applicants for Cancellation

Hearing: 9 June 2014

C Elliott QC for the Registered Proprietor

S Aymeric and G Hazel for the Applicants for Cancellation

DECISION OF AN ASSISTANT COMMISSIONER OF DESIGNS

Background

An application for registration of the design was filed by Best Berries (NZ) Ltd (the Registered Proprietor) on 1 November 2010 and registration was granted on 19 November 2010.

An Application for Cancellation of the registration, under section 15(2), was made on 17 February 2012 by Phillip Greig and Phil Greig Strawberry Gardens Limited (the Applicants). The Applicants, as confirmed at the hearing by Mr Aymeric, advanced three grounds of cancellation as follows:

The design is not new or original within the meaning of section 5(2) of the Act; The scope of the design application is unclear; and The shape and configuration of the design are solely dictated by function.

At the hearing Mr Hazel advised that the Applicants would only pursue grounds 1 and 3.

The Registered Proprietor filed a Counterstatement on 7 June 2012. The Registered Proprietor “admits that the applicants for cancellation have been involved in the strawberry growing industry in New Zealand” but denies all grounds of cancellation.



Evidence

The evidence of the Applicants for cancellation, in the form of Statutory Declarations, is as follows:

Phillip Greig , the Director of Phil Greig Strawberry Gardens Limited, Kumeu, Auckland, New Zealand, declared on 11 December 2012 ( Greig 1 ).



, the Director of Phil Greig Strawberry Gardens Limited, Kumeu, Auckland, New Zealand, declared on 11 December 2012 ( ). Sebastien Aymeric , a solicitor employed by James & Wells Intellectual Property, Auckland, New Zealand, declared on 12 December 2012.



, a solicitor employed by James & Wells Intellectual Property, Auckland, New Zealand, declared on 12 December 2012. Stefanos Papazoglou , Assistant General Manager of Prepack SA Packaging Systems, Thesi Rizoma, 19018 Magoula, Greece, declared on 29 October 2012.



, Assistant General Manager of Prepack SA Packaging Systems, Thesi Rizoma, 19018 Magoula, Greece, declared on 29 October 2012. Barbara-Anne Finn, a searcher employed by James & Wells Intellectual Property, Christchurch, New Zealand, declared on 13 December 2012.

The evidence of the Registered Proprietor, in the form of Statutory Declarations, is as follows:

Roy Victor Bladen , an Engineer and Product Design Consultant, Auckland, New Zealand, declared on 19 April 2013.



, an Engineer and Product Design Consultant, Auckland, New Zealand, declared on 19 April 2013. Dene Andrew Wilson , Director of Custom-pak Plastic Products (1997) Ltd, Auckland, and Sullivan Packaging Ltd, Christchurch, New Zealand, declared on 27 March 2013.



, Director of Custom-pak Plastic Products (1997) Ltd, Auckland, and Sullivan Packaging Ltd, Christchurch, New Zealand, declared on 27 March 2013. Phelan Michael Pirrie , the General Manager and a Director of Best Berries (NZ) Ltd, Auckland, New Zealand, declared on 16 April 2013 ( Pirrie 1 ).



, the General Manager and a Director of Best Berries (NZ) Ltd, Auckland, New Zealand, declared on 16 April 2013 ( ). Dana Stuart , Produce Procurement Manager of Foodstuffs Wellington Co-operative, declared on 17 April 2013 ( Stuart 1 ).



, Produce Procurement Manager of Foodstuffs Wellington Co-operative, declared on 17 April 2013 ( ). John Kevin Garelja , Auckland, New Zealand, a strawberry grower, product designer, and Director of the Registered Proprietor, Auckland, declared on 18 April 2013.



, Auckland, New Zealand, a strawberry grower, product designer, and Director of the Registered Proprietor, Auckland, declared on 18 April 2013. Grant John Robinson, Auckland, New Zealand, Business Manager of Foodstuffs Auckland Limited, declared on 18 April 2013 (Robinson 1)

The evidence in reply for the Applicants for Cancellation, is in the form of a Statutory Declaration by Phillip Greig, declared on 19 June 2013 (Greig 2).

On 27 August 2013 Counsel for the Registered Proprietor filed an “Application for Leave Under Regulation 65 to File Further Evidence in Support of Opposition”. After listing the Registered Proprietor’s evidence [as set out above] the application stated:

The above declarations of Dana Stuart and Grant Robinson were filed and served on the basis that they contained inaccuracies and needed to be corrected. This was done to expedite the cancellation proceeding.

On 19 June 2013, the applicants for cancellation filed the declaration of Phillip Greig in reply (dated 19 June 2013) (“second Greig declaration”).

Subsequent to receiving and reading the second Greig declaration, Phelan Pirrie, Dana Stuart and Grant Robinson became aware that their declarations contained additional inaccuracies that needed to be corrected.

Mr Pirrie, Mr Stuart and Mr Robinson have deligently [sic] prepared statutory declarations correcting their earlier declarations (“correcting declarations”).

The opponent has filed and served the correcting declarations simultaneously with this application.

Other than correcting material but [sic] incorrect factual information, the correcting declarations contain no new evidence.

The further evidence in support, in the form of Statutory Declarations, consists of:

Grant John Robinson , declared on 26 August 2013 ( Robinson 2 ).



, declared on 26 August 2013 ( ). Dana Stuart , declared on 26 July 2013 ( Stuart 2 ).



, declared on 26 July 2013 ( ). Phelan Michael Pirrie, declared on 13 August 2013 (Pirrie 2)

In a letter to IPONZ, dated 4 September 2013, the Attorneys for the Applicants for Cancellation opposed the application to file further evidence:



The Applicant opposes the application.

The Applicant refers to Synthon BV v Smithkline Beecham Plc [2006] NZIPOTAT 25 as recently endorsed in Foot Steps Orthotics Pty Limited v Foot Science international Limited [2010] NZIPOPAT 21. These cases set out five criteria to consider the admissibility of evidence outside of the regulatory timeframe.

Would the evidence if given be likely to have an important influence on the result of the case?



As further discussed in part 3 below, Mr Pirrie has already admitted to deriving a commercial benefit from the design registration before the filing date at paragraph 110 of his initial declaration. The supposedly accidental or erroneous evidence indicating use and disclosure before the priority date was confirmed in 3 of the Opponent’s declarations − its own evidence which it now seeks to contradict.

The Applicant submits that the correcting declarations add nothing new to the already filed evidence and that they will have little or no influence on the result of the proceeding.

Could the evidence have been obtained with reasonable diligence at an earlier stage?



Best Berries filed its evidence in answer on 19 April 2013. It then took Best Berries over 4 months to file the correcting declarations. Even if Best Berries only became aware that it wanted to file correcting declarations on 19 June 2013 (when it received the Applicants evidence in reply), it still took Best Berries over 2 months to file the correcting declarations (which are only 2 to 6 paragraphs long).

Also, on 11 June 2013, Best Berries confirmed to the Office that counsel was available for a hearing on 10 September. The Hearings Office contacted the parties again on 20 June 2013 to confirm that the Applicant did have the right to file evidence in reply and to advise of suitable hearing dates. Best Berries never replied to that letter from the Office. The fact that it did not reply seems to indicate that it already knew at that time that it was going to apply for leave to file further evidence. Yet, it waited over 2 months to file that application.

The Applicant submits that Best Berries did not act diligently in the preparation of the further evidence and in making the application.

The evidence could easily have been obtained earlier by getting their earlier evidence “correct”. It is now simply too late.

Does the evidence appear to be credible?



The “corrections” made in the correcting declarations seem artificial and unconvincing. 3 different persons in 3 different locations have made similar errors regarding dates.

The correcting evidence implies that within the space of 15 days, Best Berries applied for registration of the design (on 1 November 2010), placed an order with its punnet manufacturer, negotiated with Foodstuffs the launch of the new punnet and effectively launched the new punnet with promotional in-store displays in New World supermarkets (on 16 November 2010).

Such a short timeframe seems highly unlikely, especially in light of paragraph 110 of the Pirrie Declaration dated 16 April 2013 where Mr Pirrie states that manufacturing [of the punnet] did not start until August/September 2010.

It is clear that Best Berries derived a commercial benefit from the triangular punnet before the filing date of the design application.

In conclusion, the Applicant submits that the correcting declarations must not be admitted in evidence.

On 17 September 2013 IPONZ wrote to both parties as follows, with reference to the Registered Proprietor’s application to file further evidence and the Applicants for Cancellation’s response of 4 September 2013:



In Betterware International v Commissioner of Trade Marks & another HC CP19/O2 [2002], Ronald J at paragraph 26 provided valuable guidance as to the overriding consideration when considering requests to admit further evidence:

The Assistant Trade Commissioner in Red (supra) suggested that Regulation 42 must be read subject to Regulations 39-41 regarding time limits. Regulation 42 does not say that it is subject to Regulations 39-41. In the end, the justice of the situation must be the overriding principle in considering Regulation 42 applications. Regulations 39-41 are intended in part to provide for time limits to effectively case manage litigation. However, l have been informed from the Bar that extensions of time limits are common and that the delay in this case; the application for registration in 1995 and still to reach a hearing in 2002, is also common. l note that in the Red case (supra) the application was filed in 1986 and the hearing held in May 2000. The best and fairest decisions are based on the best information. Having the best information is especially important where there are public interest issues. Modest delay should not overpower the interests of justice. [Emphasis added]

As made clear by Ronald J the overriding considerations that the Commissioner must take into account when considering whether to exercise the discretion to allow further evidence are:

The overall justice of the situation; and

The need to ensure that the best information is put before the Assistant Commissioner (subject to the overall justice of the situation)



The office notes that the Betterware decision was in relation to an application to submit further evidence under the old Trade Marks Act. However, Ronald J's reasoning is equally applicable to the present situation.

Furthermore, at paragraphs 21 - 26 Ronald J specifically considered the criteria in the case for admitting further evidence, which are analogous to those of the Synthon case put forward by the applicant, before concluding that these criteria are not rigid rules but are only intended as a useful guide to help determine the overall justice of the situation, which must remain the overriding consideration when assessing a request to submit further evidence.

In view of the guidance given by Ronald J, the office starts from the position that the best evidence should always be put before the Assistant Commissioner to ensure the best decision can be reached unless there are compelling reasons that would make it unjust to do so.

Turning to the owner’s request, the purpose of the further evidence is to correct errors in the earlier filed evidence. It therefore goes to ensuring that the best information is before the Assistant Commissioner when making their decision. As the further evidence corrects mistakes in the earlier filed evidence, we do not accept the applicant’s submission that it adds nothing new and would have no influence on the result of the proceeding.

The remaining questions are whether the evidence is credible and whether it would be unjust to the applicant to submit it. The office considers the issue of credibility is one that it must treat with caution when administering proceedings so as not to overstep its role. As noted by Ronald J at paragraph 28 in Betterware:

Secondly, the Assistant Commissioner considered the information in the additional declarations would not have influenced the outcome of the decision. I have already discussed how the information was relevant to the case. It can be difficult in litigation to predict relevance to outcome well ahead of the actual case. I have been informed from the Bar that it is common for Regulation 41 and 42 issues to be resolved pre-trial. While one can appreciate the desire to narrow both the evidence and the issues at hearing, this should not be at the expense of fairness. It is notoriously difficult to decide issues of relevance pre-trial and typically unwise to attempt to do so. [Emphasis added]

The office considers the question as to the credibility of the evidence raised by the applicant is a matter better dealt with by the Assistant Commissioner at the substantive hearing.

While the office agrees that the evidence probably could have been obtained earlier with reasonable diligence, we don't consider admitting the further evidence will cause either unnecessary protraction of the proceeding or cause any real injustice to the other party given the applicant will be given the opportunity to file further evidence in reply. It seems unlikely that this will take a great deal of time, or be overly onerous, in view of the evidence already filed.

The office therefore proposes to admit the further evidence and give the applicant a month to file its further evidence in reply.

Unless the applicant wishes to request a hearing on this exercise of the Commissioner's discretion, this gives a deadline for filing its further evidence in reply of 17 October 2013.

In a letter dated 7 October 2013 the Attorney for the Applicant for Cancellation notified the IPONZ Hearing Office that “The applicant wishes to be heard on the Commissioner’s decision to admit the further evidence filed by the applicant on 29 August 2013”.

In a reply to this request the IPONZ Hearings Office advised, in a letter dated 17 October 2013:



The applicant for cancellation has requested an interlocutory hearing on the Commissioner’s decision to admit the further evidence of the registered proprietor.

On further review of the Act and Regulations, it does not appear that the applicant for cancellation is entitled to an interlocutory hearing on this matter.

Regulation 79 would appear only to provide a hearing when the exercise of a discretionary power adversely affects an ‘applicant for registration of a design’, as opposed to an applicant for cancellation in this case. Likewise, section 36 would only appear to apply to an applicant for registration of a design. Unless the applicant for cancellation can point to a provision under which it is entitled to a hearing, it would appear that the Commissioner’s decision stands.

If the office hasn’t heard back from the applicant for cancellation by 17 November 2013, we will advise the parties of proposed dates for the substantive hearing.

There was no further correspondence on this matter from either party and the Applicants for Cancellation produced no further evidence in reply (as suggested in the IPONZ letter of 4 September 2013, reproduced above).

I have carefully considered the above proceedings, particularly the decisions of IPONZ to allow the further evidence of the Registered Proprietor and not to allow an interlocutory hearing on the matter at the request of the Applicants for Cancellation, and I am satisfied that the IPONZ Hearings Office acted correctly according to the Act and Regulations.

As far as the credibility and effect of the further evidence itself is concerned I discuss it further below in paragraphs 75 and 76.



Locus standi

17. Section 15(2) reads

At any time after a design has been registered any person interested may apply to the Commissioner for cancellation of the registration ...

As pointed out by Mr Aymeric, there is no New Zealand case law on the issue of standing in a Designs Act proceeding such as this, but, in his submission, it is generally accepted that the test for determining whether a person qualifies as “interested” under the Designs Act is likely to be the same as that under the Patents Act; for example, Ian Finch, “Intellectual Property Law in New Zealand”, Brookers, 2012, states in paragraph 6.14.1(1) at page 394 under the heading “Interested person”:



In Wade’s Application IPO P01/1981, 9 January 1981, Assistant Commissioner Burton held that an “interested person" for the purposes of the Patents Act 1953 is one who has a genuine commercial in interest in the items the subject of the patent. It is likely that this test would be used for determining whether a person qualifies as “interested” under the Designs Act 1953.

Mr Hazel also referred me to IVO Research Ltd v Rocket Racing Inc [2011] NZIPOPAT 11 (15 June 2011) at [17] which lists, with approval, examples of instances in which locus standi “may be established , as set out in paragraph 14,55,2 of The British Patent Office “Manual of Office Practice (patents)”:



(1) Where there is a manufacturing interest in the UK. This has been held to cover an organisation representing a number of members, each of which has a sufficient manufacturing or trading interest (Merron's Application, 61 RPC 91); and a manufacturing right in an existing industry when the application opposed is in respect of a radical innovation in that industry (Trigg's Application, 62 RPC 18).

(2) Where there is a trading interest. This has been held to cover an association of clubs interested in the making and running of model cars, which made charges for admission of the public to meetings (Baignent Ltd’s Application 71 RPC 441).

(3) Where the opponent possesses patents (even if expired) or patent applications relating to the same subject-matter as the opposed application (Stewart's application, 13 RPC 627 and Official Rulings 1912 (B) and (C) 29 RPC Appendices v and vii) or in the same general field (see Mediline AG's Patent [1973] RPC 91).

(4) Where there is a clear financial interest (Badische Anilin- & Sodafabrik AG’s Application, [1963] RPC 19).

Mr Phillip Greig is, according to Greig 1, The Director of Phil Greig Strawberry Gardens Limited and, as stated above, the Registered Proprietor acknowledges that the Applicants for Cancellation have been involved in the strawberry growing industry in New Zealand. Thus, it seems to me that there can be no doubt that the Applicants have a manufacturing and trading interest in New Zealand and I find that they have locus standi in these proceedings.



The design in suit

The Statement of Novelty for the design reads:



The design is to be applied to a triangle berry punnet. The novelty of the design resides in the features of shape and/or configuration of the triangle berry punnet, as shown in the accompanying representations. The wording and symbols applied to the article are disclaimed and form no novelty for this design application

The Statement of Novelty is accompanied by the following drawings, showing, as pointed out by Mr Elliott, a total of 11 representations showing a range of perspective, top, front, and side views and includes perspective views with the lid open and closed.



The law

Both Mr Hazel and Mr Elliott referred me to relevant sections of the Designs Act and to relevant case law.

“Design” is defined in section 2(1) as follows:



“Design” means features of shape, configuration, pattern, or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye; but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform

The conditions necessary for registration of a design are set out in section 5(2) as follows:



Subject to the provisions of this Act, a design shall not be registered thereunder unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in New Zealand in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

The “right given by registration” is set out in section 11(1) as follows:



The registration of a design under this Act shall give to the registered proprietor the copyright in the design, that is to say, the exclusive right in New Zealand to make or import for sale or for use for the purposes of any trade or business, or to sell, hire, or offer for sale or hire, any article in respect of which the design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied, and to make anything for enabling any such article to be made as aforesaid, whether in New Zealand or elsewhere.

The provision for cancellation of a design is set out in section 15 as follows:



(1) The Commissioner may, upon a request made in the prescribed manner by the registered proprietor, cancel the registration of a design.

(2) At any time after a design has been registered any person interested may apply to the Commissioner for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new or original, or on any other ground on which the Commissioner could have refused to register the design; and the Commissioner may make such order on the application as he thinks fit.

Lord Reid, in the House of Lords judgment in AMP Incorporated v Utilux Proprietary Limited [1972] RPC 103, commenting on the “apparent policy” of the legislation (the UK Registered designs Act 1949), said on at page 108:



The definition [see section 2 of the New Zealand Act] includes features of shape, configuration, pattern or ornament. ...

Then there come the words “being features which in the finished article appeal to and are judged solely by the eye”. This must be intended to be a limitation of the foregoing generality. The eye must be the eye of the customer if I am right in holding that the policy of the Act was to preserve to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have the design to that of those which do not have it. So the design must be one which appeals to the eye of some customers. And the words “judged solely by the eye” must be intended to exclude cases where a customer might choose an article of that shape not because of its appearance but because he thought that the shape made it more useful to him.

In the case of finished articles sold to members of the public for use by them I doubt whether this limitation is of much importance The onus is on the person who attacks the validity of the registration of a design. So he would have to shew [sic] on a balance of probability that an article with the design would have no greater appeal by reason of its appearance to any member of the public than an article which did not have this design. Looking to the great variety of popular tastes this would seem an almost impossible burden to discharge.

[Emphasis added]

Mr Elliott pointed out that the register is prima facie evidence of the Design satisfying the Act’s requirements (Smith Kline and French Laboratories Limited’s Design Application [1974] RPC 253 at 261) and that the onus is on the Applicants for Cancellation to prove that the registration should be cancelled; in Bruce Sutton and Anor v Bay Masonry Limited and Anor (High Court Tauranga, CIV 2003-470-000260, 28 May 2004) Williams J said at paragraph 25:



For Mr and Mrs Sutton, Mr Marriott began from the standpoint the plaintiffs have a Design currently registered and in force. Because the register is prima facie evidence of the Design satisfying the Act’s requirements (s 25(3)) the Court should be reluctant to upset the Commissioner’s finding (Smith, Kline & French Laboratories Ltd's Design Application [1974] RPC 253,261). The onus therefore lay on Mr Elisara [the second defendant] to prove the registration should be cancelled, a task, he submitted made more difficult by the defendants’ acceptance of infringement. Mr Marriott overall submitted the evidence fell short in that regard.

[Emphasis added]

Ground 3 (as listed above in paragraph 2) - The shape and configuration of the design are solely dictated by function

Mr Hazel submitted that the design of the punnet is triangular in shape solely because it has to perform a particular function as defined in paragraph 36 of Pirrie 1:



... We had to ensure first we could fit the punnet design into a FCC crate, then that we could fit the required volume of strawberries into it, that it could stack at retail in a number of different ways to make it attractive to consumers, and finally detailing to ensure the final design and ‘feel’ of the punnet was eye catching and unique and finally would be immediately associated with our brand and product.

Mr Hazel also pointed to a number of other features which, according to Mr Pirrie’s evidence in Pirrie 1, were arrived at for functional reasons:

The lip around the punnet to allow it to close – Pirrie 1 paragraph 33 states:



... the new punnet would have to have a lip around it to allow for a hinged lid, ...

The footprint of the punnet would have to allow it to stack and nest into an FCC crate – Pirrie 1 paragraph 34 states:



To address the issues of the volume the punnet would take inside an FCC crate the outer dimensions were reduced by cutting a section out of the punnet .... This gave the punnet a foot print that would allow it to stack and nest into a FCC crate.

The circular buttons on the bottom were changed in order to work satisfactorily – Pirrie 1 paragraph 38 states:



Second CAD drawing showing modified stacking / nesting tabs on the top and bottom, the circular ‘buttons’ on the bottom were found not to work satisfactorily and were changed ...

Mr Elliott, on the other hand, submitted that, although a number of features of the punnet are dictated by function, a number of the punnet’s features “appeal to and are judged solely by the eye”, and he referred me Mr Pirrie’s description of such features under the heading of “Attractive and Visually Distinctive Design Features” in paragraphs 43 to 49 of Pirrie 1 (see paragraph 33 below).

Mr Elliott also submitted that the intent of the designer is relevant. It is clear from the evidence of Mr Pirrie that the intention of Best Berries was to develop “a completely new type of punnet that would represent its unique brand” (Pirrie 1 paragraph 26). In paragraphs 43 to 49 of Pirrie 1 Mr Pirrie describes the development of the aesthetic features:

John Garelja has a history of using punnet design features as a marketing tool which started in the 1980’s when he was the first strawberry grower to use a coloured punnet (blue) to differentiate his product from others in the market place. The blue colour punnet was linked to the ‘Strawbuddy’ brand which is registered as a trade mark, and was successful. Part of our thinking was to continue with the innovation around the ‘Strawbuddy’ brand which Best Berries uses as its brand under an agreement with John Garelja’s company Garelja Bros.

In developing the new design we wanted something attractive and unique to use for Foodstuffs’ stores. Progressive has its own particular punnet design. When we completed the triangular design for Foodstuffs, other growers wanted to use it and Best Berries said no. Part of the arrangement with Foodstuffs is that Best Berries supplies these punnets exclusively to them.

There are a number of distinctive design features in the triangular punnet. These aspects provide better eye appeal, for example, the shape is attractive, the ribbing on the sides is a smooth rounded corrugation as opposed to a square one, the lugs are rounded off not squared and are therefore more attractive to view. We use a blue label on our fruit punnets, which is unique and stands out from colours used by other sellers of fruit. In my view the combination has an aesthetically nicer appearance.

In terms of the rounded ribs we had much debate about this, John Garleja didn't want any ribs; whereas I favoured rounded ribs which in my view were more attractive. Once again, in the end aesthetic appeal won over practical considerations.

We considered what type of triangle to use. As well as rounding the edge of the lugs we rounded the edges of the corners of the container, which again looks better. We also put a slight angle on the front bottom corner for the same reason.

The lugs on the top of the punnet could have been square. This would have provided a snugger fit. However, we were mindful of the need for the product to look aesthetically pleasing, which is why we rounded the lugs off. Further, from a practical point of view square lugs would have been better from a moulding point of view. Once again however we placed aesthetic appeal ahead of convenience of manufacture.

The new design is very distinctive visually. We also have new triangular labels on top and a small area for the barcode on the bottom.

[Emphasis added]

A number of these “distinctive details” are also discussed by Mr Bladen in his evidence:

There are some distinctive details on the punnet moulding.

It has quite sharp radii on each corner, both in plan-view and side elevations, something that is often avoided in vacuum forming as this will thin the material in these areas.

It has vertical ribbing on each side, this not only enhances the visual quality of the punnet, but also helps stiffen the sides against crushing.

Noticeably the bottom triangle corners all have large chamfers, between the vertical edges and base. This is visually quite evident when viewed in side elevation.

There are several evenly placed holes on the top lid moulding. There are also larger drain holes placed in the base triangular panel.

The lid has four raised areas, these are to locate the punnet when stacked, but do form a visual border to the punnet lid.

To fully understand the how this design may have originated, it is in my view important to see the product as the consumer would, displaying strawberries. l purchased a punnet for reference.

The first impression is how this punnet has been designed to maximize the display of this particular fruit, and make it attractive to the consumer. The triangular shape as noted, has extremely small radii on the apex of each corner, the deliberate use of the feature, which matches the difficult shape of the strawberry, allows the berry to be displayed in an appealing way. ...

The bottom corners which are chamfered, again display the fruit in a better way, these design features are intentional in my view to make the whole package visually appealing to the consumer.

There are obviously set criteria for this punnet, such as, volume, height to the top surface, area limitations due to shipping packaging, however looking at the elements that have been included in the punnet design, whether for practical or increased product display reasons, the end result looks to have distinctive and visually appealing format, beyond the triangular shape.



...

... It has in my opinion several features that in this combination and format combine to visually present the product it contains to the consumer in an attractive way.

[Emphasis added]

In support of his argument Mr Elliott referred me to a number of authorities, discussed below.

In Interlego AG v Tyco Industries, Inc [1988] UKPC 3; [1989] 1 AC 217, a decision relating to the well-known Lego model building bricks, Lord Oliver of Aylmerton, delivering the decision of the Judicial Committee of the Privy Council, said:



First, the primary essential before a shape can be registered as a design is that it should have eye-appeal and in this context (a) the eye is that of the prospective customer and (b) the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer's choice. ... Secondly, the negative part of the definition does not involve, in order to demonstrate that a particular shape is "dictated solely" by function, showing that that function could not have been performed by an article in some other shape. All that has to be shown is that the relevant features of the shape were brought about only by, or are attributable only to, the function which the article in that shape is to perform, even if the same function could equally well be performed by an article of a different shape. Thirdly, if every feature of the shape is one which is attributable solely to the function which the finished article is to perform, then the exclusion operates even though the shape may also have eye-appeal.

[Emphasis added]

On page 112 of the AMP case [supra] Lord Morris of Borth-y-Gest said:



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.

[Emphasis added]

In D A Lewis & Company Limited v Thorn Bros Limited A389/A (Christchurch High Court, 10 December 1984), Holland J said at page 8:



It is common ground that the "eye" appealed to and judged solely by is the eye of an informed ordinary customer of [the article in question].

It seems to me that this question is really one of commercial success which is dealt with by Mr Pirrie, in Pirrie 1, as follows:

Since its launch the triangle punnet has been extremely successful. While the exact nature and extent of the sales of the triangle punnet are commercially sensitive and confidential I am able to confirm that the sales volumes have been in excess of one million punnets and sales turnover has been in excess of six million dollars.

The triangle punnet is now the market leader in its category and represents the benchmark for other suppliers of strawberry punnets. When introducing the triangle punnet we wanted to achieve a strategic commercial advantage with a unique and exclusive product. I consider that we have achieved that objective with a highly successful and respected new product.

In the present case, as pointed out be Mr Elliott, the Applicant for Cancellation has filed no consumer evidence or responded to the Registered Proprietor’s consumer evidence.

Taking the above discussion into account I have come to the conclusion that the shape and configuration of the design are not solely dictated by function but contain a number of features which in the finished article appeal to and are judged solely by the eye. Thus, I find that this ground is not made out.



Ground 1 (as listed above in paragraph 2) - The design is not new or original within the meaning of section 5(2) of the Act

Section 5(2) reads as follows:



Subject to the provisions of this Act, a design shall not be registered thereunder unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in New Zealand in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

[Emphasis added]

As agreed by both parties, it is clear that to be “new or original” a design must not have been “published” in New Zealand before the priority date of the application (which in the present case is the date of application for registration, 1 November 2010).

As I understand it, the Applicant for Cancellation relies on six pieces of “prior art” in support of this ground. These are considered as follows.



New Zealand Patent No 524 845

This patent specification describes a punnet defined by walls, the walls including side walls, the side walls being substantially in the shape of a trapezium having truncated ends, and the walls being configured so that when a plurality of punnets are positioned in a larger container, the punnets will tend to position themselves to minimise relative movement between the punnets in the container. Fig 1 of the complete specification is as follows:

Mr Bladen, in paragraph 21 of his evidence, dismisses this punnet as follows:



This is a strawberry punnet, which is rectangular in plan-view, and broadly rectangular with two larger chamfered edges on the base. It is described in the specification as having side walls that are substantially in the shape of a trapezium. It has little in common in my view to the triangular punnet shown in 414220. The object of the design may be similar but the execution is quite different.

I agree with Mr Bladen. The overall shape of the cited punnet is different from that of the present design and it possesses none of the distinctive details listed in paragraph 34 above.



United Kingdom Design registration No 2019716



Mr Bladen, in paragraph 22 of his evidence, dismisses this punnet as follows:



This appears to be a transparent sandwich pack, triangular in plan-view and rectangular is side elevation. It has very sharp corners on all elevations and is narrow. It does not have any of the design features within the triangular punnet, there are no chamfered corners, ribbing, holes; it is simply a plain triangular pack.

Again I agree with Mr Bladen. The cited punnet is triangular but it possesses none of the distinctive details listed in paragraph 34 above.



United Kingdom Design registration No 3021038

Mr Bladen, in paragraph 23 of his evidence, describes this punnet as follows:



This appears to be a non-transparent tray, without a lid. The plan-view shows a triangle that has very large corner radii. The side elevations show the container has ribbing on three sides, similar to the triangular punnet shown in NZ 414220, although the side draft angles are much larger on this tray design. That appears to be the only similarity between the two products, and in my view the Triangular Berry Punnet has other visual and form properties that distinguish it beyond this simple aluminum [sic] tray.

Again I agree with Mr Bladen. The cited punnet is triangular but it is not transparent, has no lid, and possesses none of the distinctive details listed in paragraph 34 above.



United States Design patent No 409911



Mr Bladen, in paragraphs 24 to 26 of his evidence, describes this punnet as follows:



Here Mr. Aymeric [in his Statutory Declaration] is referring to a design for a generic food box shown in US Design patent 409911 (Guillin). This l think highlights clearly what I believe are the distinct differences that the triangular berry punnet has tried to achieve. Firstly this food box is not a true triangle. The drawings do not show any closed plan-views, but we can assume the closed form. The shape is six sided and it appears to be, when closed, more of an irregular hexagon, having six parallel sides.

lt also has larger corners radii, figures 6 and 7 show the side elevations. This is distinctly different to the sharper form of the Triangular Berry Punnet design, and l think specific to its purpose of packing and displaying generic food and fruit items.

It does not have the larger chamfered corners of the Triangular Berry Punnet, nor the rib detail on the sides.

Once again I agree with Mr Bladen. The cited punnet is not truly triangular and differs from the present Berry punnet in several respects.



Prepac SA Punnets



Mr Bladen, in paragraph 27 of his evidence, discusses this punnet, which was raised as a citation in Mr Papzoglou’s Statutory Declaration, as follows:



Statutory declaration of Stefanos Papzoglou. This is a declaration that the images shown on the website Prepac sa were made available before January 2008. This is quite an interesting site, and one that does show various punnet and food packaging solutions. l searched the site and downloaded the product catalogue. The “Rubipack” punnet shown on the supplied screen image is the only reference image available, it is not shown in any catalogue, product range or subsequent pages. From this image it is barely possible to tell if this pack is truly triangular or a six sided item similar to US409911. There is also uncertainty if the lid is integral. The fruit punnet shown in the image to the left has a separate lid. However assuming it is triangular in plan-view, it is possible to see that the corners have very larger radii, in comparison to the Triangular Berry Punnet design, it also appears not to have any ribbing on the side faces. The top edges also appear to have large radii and this is all in keeping with the apparent use of generically packaging fruit. From the information shown in this image I would say the Triangular Berry Punnet has some distinctly different visual details compared to the item, beyond the broadly triangular form.

[Emphasis added]

I am satisfied that none of the cited documents discussed above, irrespective of their publication dates in New Zealand, prior publish the punnet of the present design registration.

In addition to the citation of the above documents, the Applicants for Cancellation submitted that there was non-secret use of the current design before the priority date (1 November 2010). Mr Hazel submitted that there is no evidence from any of the Registered Proprietor’s witnesses to show that the manufacturing process for the punnets was confidential and that it began before the priority date.

Mr Hazel submitted that both Mr Pirrie and Mr Garelja stated that the design process for the design in suit was confidential but that there no mention of the manufacturing process being confidential. In support of this submission he referred me to the Registered Proprietor’s evidence of Mr Garelja, Mr Pirrie, and Mr Wilson.

Mr Garelja said at paragraph 10:



... The whole design of this punnet was confidential to the directors of Best Berries only. We even had discussions about letting one of our directors, Grant Ashby, be involved as he had a close relationship with Mark Zaknic and we were concerned he might say something to him about it. Custom-Pak Plastic Products (1997) Ltd and Sullivans Packaging Limited (for convenience, jointly referred to as Custom-Pak/Sullivans) were also involved but told that the development of this punnet was confidential. I know that Custom-Pak/Sullivans got a lot of flak from growers when this punnet came on to the market unannounced or forewarned as it changed the dynamics of the market. That is, as it was a size between the two standard sizes of 250gm and 440gm and no one else had a size similar.

Mr Pirrie, in Pirrie 1, paragraph 103, stated that “... the whole project was highly confidential ...”.

Mr Wilson, the Sales Manager of Custom-Pak/Sullivans, stated in his Statutory Declaration:

Custom-Pak/Sullivans has had a long working history with Best Berries (NZ) Ltd (“Best Berries”). Custom-Pak/Sullivans has over the years manufactured various strawberry punnets for Best Berries. These are the GS2, GS3 and triangle punnet ("GABs“). Prior to this, we had a longer history of collaboration with John Garelja going back more than 20 years.

In early May 2010, a meeting was arranged with John Garelja and Phelan Pirrie. This meeting was confidential and took place on 25 May 2010 at the Garelja packhouse. This was to be the first of many meetings to get the design right for what later became the GAB punnet (or triangle punnet). At the time the concept and design was disclosed to me I had not seen a design like this.

Best Berries commissioned Custom-Pak/Sullivans to make drawings, tooling and dies for the manufacture of Best Berries triangle punnet. Custom-Pak/Sullivans did this work pursuant to the commission and was paid. As a result, any copyright, design and other intellectual property rights which arose as a result of this instruction belong to Best Berries. Further, to avoid any possible doubt, on 6 June 2012 Custom-Pak/Sullivans executed a deed of assignment with Best Berries assigning to Best Berries any and all remaining rights which might exist in these works.

The entire process discussed above was strictly confidential in nature and at no time was the design, in any of its development stages, disclosed to any parties outside of Best Berries.

[Emphasis added]

As I understand it, these extracts imply that the whole process of developing the Berry Punnets was intended to be kept confidential; it was not limited to the “design” process but extended also to the production of the finished product. This is, it seems to me, made particularly clear by paragraph 6 of Mr Wilson’s evidence as quoted above, which follows discussion not only on the design process but also on at least the early stages of the manufacturing process, as evidenced by the discussion in his paragraph 5 of the making of drawing, tooling, and dies for the manufacture of the punnets.

Mr Hazel also referred me to paragraphs 10 and 11 of Greig 1 wherein Mr Greig states that Mr Garelja came to visit him, in “on or about May/June 2010” with a sample triangular shaped punnet:

In or about May/June 2010, John [Garelja] came to visit me at my premises, bringing with him a sample of a triangular shaped punnet for my consideration that he had had manufactured. This triangular punnet was identical to the subject of Design Registration No 414220. John and I had an excellent working relationship and it had been contemplated that we would both use the triangular punnet. We had often discussed together the direction and innovation of packaging within the industry and it was not uncommon for us to share our thoughts and ideas.

As noted, we had together considered the use of triangular shaped sandwich packaging for adaption for strawberry packaging. I regarded this visit in May/June 2010 as a continuation of our previous discussions. It appeared John had developed the idea further. During this visit John offered use of this triangular punnet (the subject of Design Registration No 414220) for my own packaging requirements for the upcoming season.

[Emphasis added]

This was vehemently denied by both Mr Garelja and Mr Pirrie.

Mr Garelja says, in paragraph 10 of his evidence (replying to of Mr Greig’s paragraph 10):



This is completely untrue. The whole design of this punnet was confidential to the directors of Best Berries only. We even had discussions about letting one of our directors, Grant Ashby, be involved as he had a close relationship with Mark Zaknic and we were concerned he might say something to him about it. Custom-Pak Plastic Products (1997) Ltd and Sullivans Packaging Limited (for convenience, jointly referred to as Custom-Pak/Sullivans) were also involved but told that the development of this punnet was confidential. I know that Custom-Pak/Sullivans got a lot of flak from growers when this punnet came on to the market unannounced or forewarned as it changed the dynamics of the market. That is, as it was a size between the two standard sizes of 250gm and 440gm and no one else had a size similar.

[Emphasis added]

Mr Pirrie says, in paragraphs 103 and 104 of his evidence (replying to of Mr Greig’s paragraph 10 and 11):



This is not correct, John Garelja didn't visit him with our punnet as the whole project was highly confidential and we did not receive final samples until July 2010.

No other grower was ever, at any time, offered the use of our punnet, the whole project was around a punnet that was for our exclusive use. What Phil Greig says is incorrect.

[Emphasis added]

Mr Hazel also submitted that if Foodstuffs started selling the triangular strawberry punnet before the priority date, 1 November 2010, then that clearly amounts to prior use which would invalidate the Owner’s design registration. In support of this proposition the Applicants referred me to the evidence of Ms Stuart, the Produce Procurement Manager of Foodstuffs Wellington Co-Operative, Mr Robinson, the Business Manager of Foodstuffs Auckland Limited, and Mr Pirrie, all of whom stated or implied that this was the case.

Ms Stuart stated in Stuart 1:

In 2008 Best Berries (NZ) Limited (Best Berries) approached us with their new triangular punnet used for strawberry packaging. An example of the triangular punnet is annexed to this declaration. Before this time, I had not seen anything similar to this triangular punnet before. I immediately saw real benefits in the design from a product design point of view but also from a customer presentation and marketing point of view. The design features which immediately came to mind are its unique triangle shape which I have not seen before and its stacking functionality that means in store presentation is excellent compared to other strawberry punnets.



...

Foodstuffs first started selling the Best Berries strawberries in the triangular punnets in October 2010 and have now been selling the punnets for three seasons. The triangular punnet design has proven to be very successful commercially and Foodstuff’s turnover of this product has been well over $2,000,000.

[Emphasis added]

Mr Robinson stated in Robinson 1:

In July 2010, Best Berries (NZ) Limited (Best Berries) approached us with their new triangular punnet used for strawberry packaging. An example of the triangular punnet is annexed to this declaration. Before this time, I had not seen anything similar to this triangular punnet before. l immediately saw real benefits in the design from a product design point of view but also from a customer presentation and marketing point of view. The design features which immediately came to mind are the punnet is designed in a way that protects the Strawberries. The punnet also gives Foodstuffs a unique point of difference to all of our competitors with no other Growers packing into anything similar.

...

Foodstuffs first started selling the Best Berries strawberries in the triangular punnets in this October 2010 and have now been selling the punnets for 3 years. The triangular punnet design has proven to be very successful commercially and Foodstuff’s turnover of this product has been well over $5mil P/A.

[Emphasis added]

Mr Pirrie, in Pirie 1, states:

Shortly after the triangle punnet was launched we encouraged stores to be creative with the display and to use the stacking design to create attractive displays - see New World Porirua Diagram 3.1. - Exhibit PP21.

This was one of the first displays we received and shows our strawberries displayed with a chocolate fountain.

[Emphasis in original]

The photograph which is Exhibit PP21 to Pirrie 1 has a stick-on label at its top left corner which states “Diagram 3.1 Display in Porirua New World. This shows the punnets stacked on display. Photo: 20-8-2010”.

Mr Pirrie, in Pirrie 2, explains that the date on the label he placed on the photograph is entirely wrong and was emailed to him by Foodstuffs Wellington on 16 November 2010, after the priority date. In Pirrie 2 he states:

On 20 June 2013 I was provided with a copy of Mr Greig’s statutory declaration. At paragraph 26 of the declaration, Mr Greig refers to Exhibit PP21 of my earlier affidavit and notes that it is dated 20 August 2010, which is two months before I applied for registration with IPONZ.

Having read this evidence, I now realise that the 20 August 2010 date on the label which I placed on the photograph is entirely wrong. The photograph in Exhibit PP21 was one of three photographs that were taken in the New World store in Whitby (near Porirua) after the triangle punnet product was commercially launched in early November 2010, not August 2010 as Mr Greig has suggested.

I am certain the photograph in Exhibit PP21 was taken during the week of 15 to 21 November 2010 because it depicts a promotional display that took place at that time. I contacted Foodstuffs Wellington on 6 November 2010 about this particular promotion.

On l6 November 2010, Foodstuffs Wellington emailed the photograph in Exhibit PP21 (and two others) to me. A copy of the email attaching the photographs is annexed to this declaration as Exhibit “A” (with personal details redacted). Accordingly, I can categorically state that we did not supply the New World store in Whitby/Porirua with this product in August 2010 and accordingly the date on the label is wrong.

[Emphasis added]

Ms Stuart and Mr Robinson also filed second Statutory Declarations to correct statements they identified in their first Declarations.

Ms Stuart said in Stuart 2:

I previously made a declaration in this matter on 17 April 2013. However, there were two errors in that declaration that I wish to correct. I am making this declaration to correct those errors.

In my previous declaration I said that in 2008 Best Berries (NZ) Limited (Best Berries) approached Foodstuffs with a new triangular punnet used for strawberry packaging and referred to an example of the triangular punnet which was said to be is annexed to the declaration. Nothing was annexed to the declaration. The 2008 date was an error. It was not until 2010 that I started to talk to Best Berries about the idea of a generally triangular-shaped punnet.

The Best Berries triangular punnet was commercially launched in November 2010, not October 2010 as I incorrectly stated in my earlier declaration.

[Emphasis added]

Mr Robinson said in Robinson 2:

I previously made a declaration on this matter on 18 April 2013. In my earlier declaration I referred to an annexure which was not actually attached. My earlier declaration also contained an incorrect date. I make this declaration to correct these two matters.

In my previous declaration I stated that in July 2010, Best Berries (NZ) Limited (Best Berries) approached us with their new triangular punnet used for strawberry packaging and referred to an example of the triangular punnet being annexed to the declaration.

What I meant to refer to was a general discussion I had with Phelan Pirrie about the general concept of a new punnet Best Berries were planning to launch. Best Berries eventually launched the product in November (not October) 2010.

Emphasis added]

It seems to me that Mr Pirrie, in Pirrie 2, has explained, with suitable corroborating evidence (the email he received from Foodstuffs Wellington) that the date on the photograph in Exhibit PP21 was “entirely wrong”. In the same Declaration he states that “I can categorically state that we did not supply the New World store in Whitby / Porirua with this product in August 2010 and that the label on PP21 is wrong”. As I see it, while he did not give any explanation as to why he chose the wrong date, in the absence of any contrary evidence from the Applicants for Cancellation, his word must be accepted.

Ms Stuart and Mr Robinson have also corrected, in Stuart 2 and Robinson 2, some of the dates quoted in their first Declarations and confirm that the Best Berries triangular punnet was commercially launched in November 2010, not October 2010. Once again, as is the case with of Mr Pirrie’s evidence, although no reasons are given for the wrong dates being quoted in Stuart 1 and Robinson 1, I believe that their word must be accepted in the absence of contrary evidence from the Applicants for Cancellation.

In conclusion, I find that this ground is not made out.



Summary of decision

I am satisfied that IPONZ Hearings Office acted correctly according to the Act and Regulations in admitting the further evidence of Mr Pirrie (Pirrie 2), Ms Stuart (Stuart 2), and Mr Robinson (Robinson 2).

In respect of the application for cancellation, I find that:

The applicant’s for cancellation have established their locus standi; however

Neither of the grounds for Cancellation have been made out.



Costs

I award costs to the Registered Proprietor for these proceedings in accordance with scale in the sum of $3,570.00 calculated as follows:





Item in IPONZ scale of costs

Cost

Preparing and filing Counterstatement

Receiving and perusing Applicants for Cancellation’s evidence

Preparing and filing Registered Proprietor’s evidence:

Receiving and perusing Applicant for Cancellation’s evidence strictly in reply:

Preparation of case for hearing:

Attendance at hearing by counsel ($180 x 4 hours):

Hearing fee:

TOTAL:

300.00

400.00



800.00

100.00

500.00

720.00

750.00

$3,570.00 to the Registered Proprietor

Dated this 31 day of July 2014



K B Popplewell

Assistant Commissioner of Designs

Clive Elliott for the Registered Proprietor

James & Wells for the Applicant for Cancellation

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