September 30, 2016
Petitions filed by Key Largo Car Accessories seeking the cancellation of certain industrial design registrations for car mat designs were recently denied by the Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO). Through four separate decisions, the BLA upheld the validity of four industrial design registrations for car mats registered in the name of Alwin T. Go.
Key Largo Car Accessories, the petitioner in all four petitions, sought to cancel Industrial Registration Nos. 3-2012-00340, 3-2014-001210, 3-2014-00155 and 3-2014-001207, all for car mat designs registered in the name of Mr. Go.
To support the petitions, Key Largo essentially argued that it imported and sold car mats with designs similar to Mr. Go’s before the industrial design applications were filed on November 27, 2014. Photographs of the car mats sold by Key Largo as well as invoices and delivery receipts covering the sales were submitted. A product catalog which showed car mats with similar designs allegedly published earlier than the filing of the design applications was also submitted by Key Largo to prove prior art. Furthermore, Key Largo pointed out that the registrant’s act of ordering molds from a third party can be considered prejudicial disclosure which should render the industrial design registrations void.
The BLA denied the petitions for cancellation of registrations as it found Key Largo’s evidence insufficient to prove lack of novelty. In the decision, the BLA pointed out the following key points:
- First, the product catalog submitted does not show the specific date of its publication. It only shows the year, 2013.
- Second, the mats presumably sold by Key Largo do not have any marking indicating the date of manufacture.
- Third, the invoices and delivery receipts were mere photocopies and they are insufficient to prove that the item code corresponds to the actual design in the product catalog. Without the dates of publication and dates of manufacture, these pieces of evidence cannot serve as anticipatory bars.
The BLA also pointed out that the registrant requested a Registrability Report which findings did not point to any document of particular relevance in determining novelty and since the patent office is an expert body duly qualified to determine questions of patentability, its findings must be accepted if they are consistent with the evidence.
As to the question of prejudicial disclosure, the BLA considers the act of purchasing molds for the car mat designs as preparatory steps to making the article itself and therefore, are not tantamount to prejudicial disclosure.
A clear take away from these recent decisions of the BLA is that the actual date of publication of the prior art including the month, day, and year must be specifically proven by the one claiming lack of novelty.
