4 What is a Design?

As discussed in Chapter 1, what is ‘design’ can mean different things and largely depends on the context in which the term is used. The legal definition of ‘design’ is narrower in comparison, with a particular focus on the visual appearance of products. This chapter aims to explore the provisions concerning designs deemed eligible for protection under the Designs Act 2003 (Cth).

The definitions discussed in the chapter set the subject matter capable of protection. Any subject matter issues of a design are normally handled during the formalities assessment after registration is requested.^[1] However, it is possible for a design to be assessed for lack of subject matter during examination.^[2]

The Definition of ‘Design’

The definition of ‘design’ under the Act is:^[3]

design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.

The definition differentiates between a product and its visual features that create its appearance. A design, therefore, can only exist in relation to a ‘product’ that it is applied to.^[4] During the formalities assessment, the formalities officer will use the representations and the information in the application to:

1. Identify the product;
2. Determine the overall appearance of the product; and
3. Identify the visual features that collectively create the overall appearance.^[5]

For example, consider the following smartwatch.

The product is likely described as a watch, smartwatch or wearable device.

The representation above shows all the visual features forming part of the design. The product includes a watch face, a band and a clasp. The overall shape of the watch face (or display) is rectangular with rounded corners. The watch face includes a rectangular display screen at the top of the device. The display screen is surrounded by a bezel edge that is rectangular in shape with rounded corners that slope downwards. Alongside the housing of the watch face features two rounded dials and three buttons on the sides of the watch face. The left side has two rounded buttons, whereas the right side features two rounded dials and a rounded button. Each differs in shape and size. The two dials feature ridges along the sides. Connected to the watch face is a watch band with repeating rectangular-shaped links that are close together and flat on the edges. The ends of the band meet at a clasp that is larger than the watch band and slopes toward the underside of the band.

The isometric drawing above shows the various features that give its overall appearance. The design’s overall appearance shows features that are prominent to the eye, including the overall shape of the watch face, the screen, three buttons, two dials, the shape of the band links and the shape of the clasp. Applying to register this design would afford it exclusive rights to the individual and the specific appearance of the watch as it is shown.^[6] Although the features described above can serve a functional purpose, the rights granted are concerned with the visual features, not its function.^[7] Although the drawing includes shaded areas, denoting the product’s shape, nothing in the image hints at colour, decoration, or adornment features.

It is possible for a single smartwatch device to comprise multiple designs. Designs could subsist in the watch band and its links, the housing for the watch face, the dials, the buttons, the screen and the clasp. In addition, each could have separate designs if different colours or decorations were used on these parts.

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Overall Appearance

IP Australia provides more guidance on the concept of ‘overall appearance’. This explanation can speak to the types of applications you will see on the Designs Register.^[8] How an applicant crafts their application and the representations can influence how the overall appearance of the product is viewed by the Designs Office. Certain visual features may be highlighted, while others are not the main focus of the design. Such a practice is habitually used to help navigate the distinctiveness assessment.

Visual Features

Section 7 of the Act sets out what is and what is not a visual feature of a product. The definition of a visual feature is non-exhaustive.^[9] Any feature can be a ‘visual feature’ as long as it is not excluded under s 7(3). Under the section, a clear delineation forms — with designs relating to the visual appearance of a product as opposed to the feel of a product.

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The visual features can refer to any of the 2D or 3D aspects of a design. The dictionary definitions of the named visual features are:

• Shape: ‘the external form, contours, or outline of someone or something’.^[10]
• Configuration: ‘an arrangement of parts or elements in a particular form, figure, or combination’.^[11]
• Pattern: ‘a repeated decorative design’.^[12]
• Ornamentation: ‘decorative elements added to something to enhance its appearance’.^[13]

The appearance of a product is made up of its visual features. When an applicant applies to register a design, IP Australia does not decide ‘whether a visual feature can be described as a shape, a configuration, a pattern or an ornamentation’.^[14]. There is no sharp distinction made between the different named features. The definition of a design is intended to be as extensive as it reasonably should be, given the overall appearance is judged visually.^[15] Any feature is a visual feature if it can be described as being shape, configuration, pattern or ornamentation.^[16]

The visual features in relation to a product may, but need not, serve a functional purpose.^[17] The shape of a product can often be dictated by a functional purpose. For example, think of a knife having a sharpened edge. Whether a design fulfils a functional purpose is irrelevant to whether it would be protected under the Act. The focus of design protection lies in a product’s distinct appearance rather than how functional it may be.^[18] The latter may require a patent instead. A distinction, therefore, needs to be made ‘between a specific shape that has a functional purpose, and a principle of design to meet a functional purpose’.^[19]

Even a product’s unseen features can be considered ‘visual features’ and play a role in its appearance. This only applies if the internal features are visual, not tactile or related to the materials used. The fact that these features are typically unseen during normal use is irrelevant. While the internal features of a product would not bar it from registration, they may become relevant points when assessing distinctiveness, as will be discussed in the next chapter.

Colour is not expressly mentioned in the definitions of ‘visual feature’, yet it was recommended to be included in the ALRC Report.^[20] Despite its absence in section 7, colour is a visual feature.^[21] Indeed, ‘pattern’ and ‘ornamentation’ are prima facie words that can describe features of colour. For example, consider the bevelled edges of the Apple iPhone 5S shown below. The edges of the iPhone can be described as gold ornamentation.^[22] Colour can specifically play a role in the distinctiveness assessment discussed in the next chapter.

The aspects that are expressly excluded are the feel of the product, the materials used in the product, and the indefinite dimension or more than one repeat of a pattern where the product has one or more indefinite dimensions.^[23] The feel of a product would include the texture or tractility of a product’s surface. A distinction should be made here: although a surface finish applied to a product could provide the product with a certain feel, a surface finish could equally affect the product’s visual appearance. The latter would be eligible for registration, not the former. The same can be said of the materials used in the product. The materials used to produce the product cannot be protected,^[24] but if the use of materials results in a particular visual appearance, the appearance can be protected.

For products with one or more indefinite dimensions, the indefinite dimension is not a visual feature capable of protection.^[25] For example, the midsection of an Apple Watch ‘Solo Loop’ watch band has an indefinite length. Such a feature would not be able to be registered. Where there are repeating patterns, a single unit of the pattern is a visual feature but not an indefinite number of repeating units.^[26] If the base unit has an indefinite dimension (e.g. stripes), it would not be a valid design.

How visual features are judged is dependent on context. When an applicant files an application, they will present the design and its visual features in a static format with the submitted representations. However, it can be the case where the appearance of a product can change depending on how it is used. The visual appearance of a product could be static (e.g. a hammer) or changes through use (e.g. a candle). It is the practice of IP Australia that ‘the visual features of the product that are the subject matter of the design must be assessed when the product is ‘at rest’ rather than in use’.^[27] This becomes relevant in two instances: applications for virtual designs (discussed below) and assessing the newness and distinctiveness of designs against the prior art base.^[28]

Product

Section 6 of the Act defines what is a product. For a design to be registered, there must be a product to which the design relates.^[29] Read section 6 below, where it is apparent that products are tangible objects that have material form. The definition reflects the history of design protection and the Industrial Revolution discussed in Chapters 1 and 2.

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As discussed in Chapter 3, an applicant must sufficiently identify the product in the application through a product name. During the formalities assessment, the formalities officer will check this and classify it according to the Locarno Agreement.^[30] Although the section specifically includes what a product is, there are no equivalent provisions of what a product is not (like that seen with visual features). IP Australia, however, provides guidance on what is not a product: an intangible item or human being.^[31] The guidance states:

The operative provision of the definition is that a product needs to be a thing that is manufactured or handmade. Whether a design meets this requirement will typically be handled during the formalities assessment.^[32]

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Virtual designs

IP Australia’s practice of assessing a design application ‘at rest’ has its origins in assessing design applications for virtual or non-physical designs. These designs include graphical user interfaces (GUIs), icon designs, typeface/ type font designs, holographic designs, projected images, animated characters and virtual three-dimensional designs. As a critical connection between the end-user and the technology, GUIs play an essential role in making the interaction with computer technology possible. Designing GUIs is a practice that emerged with the advent of personal computing and increased software development. GUIs allow users to interact effectively and efficiently with electronic devices like computers and smartphones. Early computers required text-based user interfaces, which required a user to type commands for the computer to complete tasks. GUIs permit users to manipulate graphical elements directly to complete tasks. As mobile computer technologies such as smartphones and smartwatches have become ubiquitous in society, the user interfaces of these devices have become known as ‘aesthetically innovative’.^[36]

As discussed in Chapter 1, technological innovation has led to new types of designs. Over recent decades, filings for new technological designs have grown significantly in many jurisdictions.^[37] Australian law, however, has yet to catch up. Like most areas of law, designs law must grapple with adapting to changing circumstances. Previous reviews of the Australian design protection system have identified virtual or non-physical designs as new technological designs that have challenged this area of intellectual property law.^[38]

The level of protection offered to virtual design applicants under the Designs Act 2003 (Cth) is presently unclear. Under the current interpretation of the Act, virtual designs may be registered but are unlikely to meet the legislative requirements to be certified at the examination stage.^[39] Currently, there are several registered designs for GUIs and graphical icons. At the point of application and subsequent formalities check, an application for a virtual design must name a product.^[40] However, the Act does not expressly reference virtual designs under the ‘product’ or ‘design’ definitions. Under the s 6 definition of a ‘product’, it must be something ‘manufactured or handmade’.

For most applications for virtual designs received by IP Australia, the product name nominated by the applicant is a ‘display screen’.

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The system for design rights leads to uncertainty for applicants who have already paid fees for a ‘registration’ for the virtual design but have a low probability of obtaining an enforceable right for the virtual design. IP Australia has described this as an inconsistency between both stages under the Act.^[43]

Based on the current definitions, virtual elements such as GUIs and graphical icons are likely construed as visual features of ‘pattern or ornamentation’ and display screens are considered a ‘product’.^[44] The primary issue is the interplay between the ‘design’ and the ‘product’ required under the Act.^[45] That is, whether those visual features relating to the product named in the application are elements that culminate in its overall appearance, as required under the s 5 definition of a ‘design’. Under IP Australia’s interpretation of the Act, virtual designs must be carefully assessed to ascertain whether the software produces the relevant visual features.^[46]

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After the introduction of the current Act, the Australian Designs Office considered the refusal to register a virtual design (as opposed to the examination). Somfy SAS was the first where the Hearing Officer found that an LCD screen for remote control was registrable – although unlikely to survive certification.^[51] Following this decision, the Advisory Council on Intellectual Property released a paper recommending that protection be available to applicants for some virtual designs or non-physical designs.^[52] The culmination of this decision and the report likely led to increased applications for registrations at IP Australia.^[53]

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As a result of these decisions, the Designs Office’s current practice is to assess the visual features of the product in the context of the product ‘at rest’, as opposed to ‘in use’.^[58] A practice ACIP has called to be reconsidered and abandoned. Specifically, because there is nothing in the definitions or elsewhere in the Act that requires that the visual features be observable in the context of the product ‘at rest’.^[59]

The protection of virtual designs has been the subject of ongoing policy development at IP Australia to amend the Act to permit its protection. Changes to permit virtual design protection are discussed in Chapter 11.

Component part of a complex product

Many products are assembled from component parts. Take the following example of an automobile. The car is a complex product as it comprises many parts, including component parts that may be replaced. Component parts, as well as the complex product, can be protected under the Act. Pursuant to s 7, the component part can be treated as a product in its own right if made separately from the product.^[60]

A design owner can apply for the protection of both a component part and a complex product. If only the complex product is protected, however, it is unlikely the component parts are protected.^[61] The applicant must, therefore, specify what they wish to register. Using the example above, the applicant would decide to register either (i) the automobile as a complex product only; (ii) the bonnet of the car and wheels (for example) as component parts only; or (iii) the complex product and the component parts.^[62]

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When applying to register a complex product, the representations submitted with the application should demonstrate the complex product in its assembled form.^[63] The assembled form should display the component parts and demonstrate a physical connection of the elements.^[64]

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A distinction needs to be made between those designs with multiple visual elements and those with complex products for the purpose of section 7. A product is a complex product only if it permits disassembly and reassembly. In Aristocrat Technologies Australia Pty Limited [2021] ADO 1, the hearing officer clarified that assembly ‘involves parts being put together, in the sense of being physically connected, to create one assembled thing’.^[65]

IP Australia guides what is considered a complex product and what is not.^[66]

If an applicant wishes to file a single application for the different component parts, the representations would need to show (i) how the components are formed together, (ii) what the assembled product looks like, and (iii) how the components interact with each other.^[67] When examining registered designs for component parts, they will be treated separately from the complex product.^[68]

One or More Indefinite Dimensions

The design of a product with one or more indefinite dimensions is capable of being protected as long as one of the following categories contained in s 6(3) applies:

• The cross-section of any indefinite dimension shows that the design is either fixed or varies according to a regular pattern.
• All the dimensions of the item remain in proportion.
• The cross-sectional shape is the same throughout, regardless of whether the dimensions of that shape vary according to a ratio or series of ratios.
• The item has a pattern or ornamentation that repeats itself.

Assembled Set or Kit

A kit is also capable of being protected under the Act.^[69] A kit is a set of parts or components that are packaged together, usually with instructions, so that you can assemble them into a final product. Under s 6(4), the product as, ‘a kit which, when assembled, is a particular product is taken to be that product.’ Therefore, the final product needs to have been assembled from the kit. This is an important distinction as mere sets or collections of items are not kits. The protection afforded to kits enables a design owner to stop a competitor from selling a set of components that a purchaser assembles into the final product, as opposed to seeking to stop the purchaser (as they are the ones to handmake the final product).

IP Australia provides the following illustrative examples to demonstrate what is protected as a kit.^[70]

• A product named ‘model aeroplane kit’ would meet the definition of a product if the representations show how the items form together to make a single design (a model aeroplane design).
• A first-aid kit does not meet the requirements as it is not a single product. The items in the kit do not assemble to make a single design. The first-aid kit is merely a collection of individual objects.
• A ‘car body kit’ is a collection of items that can be added to a car. The items are not assembled to form a product. They are meant to be attached to another product – the car.

Refusal to Register

The discussion above canvasses what can be registered as a design. However, there are designs that will be refused protection. IP Australia will refuse designs that fall under section 43 of the Act. During the formalities assessment and examination,^[71] the formalities officer and examiner will assess the design to see if it contains a design that should be refused under section 43. An applicant has the opportunity to amend an application if it falls foul of section 43 or present arguments as to why the provisions do not apply to the design. Read section 43 below.

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Since the introduction of the 2003 Act, only 33 designs have been refused. Of these, 25 were applications filed by Microsoft for ‘type font’ designs. Such a result indicates most applications that have been refused under the s 43(2),^[72] and likely found not to comply with the section 6 definition of a product.^[73]

An application to register a design will be refused if it contains certain types of designs.^[74] The types of designs the Register must refuse are found under reg 4.06. The Regulations grant IP Australia a general regulation power permitting the exclusion of ‘special items’ from protection.^[75] Other items of registration that are excluded are those which overlap with the Olympic Insignia Protection Act 1987 (Cth) and the Circuit Layouts Act 1989 (Cth). Read regulation 4.06 below.

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Medals

Suppose the following design for a medal was submitted in an application. In that case, the Registrar must refuse its registration because the design is for a medal with a commemorative or reward purpose. The presence of the ‘1’ on the medal likely indicates its purpose to reward efforts in competition. A formalities officer or examiner will determine whether the design contains a medal. The Macquarie dictionary defines a medal as:

A flat piece of metal, usually in the shape of a disk, star, cross, or the like, bearing an inscription, device, etc, issued to commemorate a person, action or event, or given to serve as a reward for bravery, merit, or the like.

A design for a ‘commemorative coin’ filed on July 10, 2023 (Design 202314464 for a ‘VIET NAM CONG HOA commemorative coin’), likely faced this objection during the formalities assessment. The application subsequently lapsed on November 18, 2023. Other medals have been registered and certified — likely due to the lack of a commemorative or reward purpose.

ANZAC

A design that includes the word ‘Anzac’ or resembles the word ‘Anzac’ will be refused registration.^[76] Only applicants with permission from the Minister for Veterans’ Affairs may use the word as part of an application.^[77]

The word ANZAC is the most regulated word in Australia. To read more about the protection afforded to the word ANZAC read Associate Professor Catherine Bonds’ book ‘Anzac: The Landing, The Legend, The Law’.^[78]

Currency

Designs that resemble paper money will be refused protection. Subsection 19(1) of the Crimes (Currency) Act 1981 (Cth) prohibits:

a business or professional card, notice, placard, circular, hand-bill, poster or other material that so resembles current paper money or an Australian prescribed security as to be capable of misleading a person into believing it is that current paper money or that Australian prescribed security.

Paper money is defined as ‘… money comprising a note written, printed or otherwise made on paper or any other material’.^[79]

A prescribed security is defined as:

… any bond, debenture, stock, stock certificate, treasury bill or other like security, or any coupon, warrant or other document for the payment of money in respect of such a security, issued by the Commonwealth of Australia, by an authority of the Commonwealth of Australia or by, or with the authority of, the government of a country other than Australia.^[80]

Therefore, if a design disclosed in an application is likely to mislead someone into believing the design is either paper money or an Australian-prescribed security, it will be refused.^[81] This includes any money of any country. Interestingly, the prohibition does not include coin denominations. However, a coin design could be caught by the prohibition in reg 4.06(a).

Again, applicants could only ever register a design for currency if they had express permission from the Treasurer of Australia or a person authorised in writing by the Treasurer of Australia.^[82] However, conditions are placed on such approval, including ‘reproductions or images (of past and present Australian banknotes) must be less than three-quarters or greater than one and a half times the length and width of the genuine banknote being reproduced’.^[83]

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Scandalous Content

A design will be refused if it contains any scandalous matter or matter that might reasonably be considered scandalous. For applications filed after 10 March 2022, the scandalous content of an application will be assessed as part of the formalities check.^[87] Refusing a design for being scandalous is similar to the ground of objection for registering a trade mark under the Trade Marks Act 1995 (Cth).^[88]

IP Australia provides the following guidance on what is a scandalous application.^[89]

Designs applied for registration that incorporate Indigenous Knowledge could be refused registration. A design would be scandalous if it includes a traditional cultural expression (language, symbols and visual art) and is registered in the name of a person or persons who have no connection to it. It is likely to be considered shocking or offensive to both Indigenous and non-Indigenous people that it would be registered. Traditional cultural expression may only be used by the traditional owner, or the expression is sacred. The use of Indigenous Knowledge in designs is covered in more detail in Chapter 8.

Arms, flags, emblems, etc.

The Registrar will refuse registration for any design that shows:

• The arms or a flag or seal of the Commonwealth or a state or territory.^[90]
• The arms or emblems of a state or territory, a city or town in Australia, or a public authority or public institution in Australia.^[91]
• the arms, flags, state emblems or other signs of another country.^[92]

A distinction needs to be made here — the refusal applies to designs that are arms, flags or emblems, not designs that contain these elements.^[93] This exclusion also covers flags prescribed by the Flags Act 1953 (including the Australian Aboriginal Flag and the Torres Strait Islander Flag).

Olympic symbols

The Olympic Games are an exceptional event. The games are truly global and involve multiple countries and sports.^[94] The Australian Government introduced the Olympic Insignia Protection Act 1987 (Cth) to prevent the unauthorised and deceptive use of Olympic insignia. The Act vested the ownership of Olympic insignia, including the Olympic rings symbol, the Olympic motto and up to ten registered designs, to the Australian Olympic Committee (AOC). The International Olympic Committee recognises the AOC as the national committee responsible for protecting and developing the Olympic movement in Australia. The protection of Olympic insignia not only prevents ambush marketing related to the Olympic Games but also enables the AOC to derive income by licensing these Olympic insignia.

With the introduction of the Olympic Insignia Protection Act 1987, the Designs Act was amended so that any design that includes Olympic designs or symbols must not be registered.^[95] Section 18 of the Olympic Insignia Protection Act 1987(Cth) prescribes:

Section 2 of the Act contains the following definitions.

IP Australia maintains a Register of Olympic Designs to protect certain local Olympic products. Check out the list of current and former registrations: Olympic Designs.

Integrated circuits

An integrated circuit is a set of electronic circuits placed on a small, flat piece of semiconductor material. The passage of the Circuit Layouts Act 1989 (Cth) saw the copyright-like protection of circuit layouts.

Introduced alongside the Circuit Layouts Act 1989 (Cth), section 43 excludes the registration of designs in relation to integrated circuits, parts of an integrated circuit or a mask used to make an integrated circuit. This provision, however, does not exclude circuit layouts from being registered.

The Circuit Layouts Act 1989 (Cth) defines an ‘integrated circuit’ as:

a circuit, whether in a final form or an intermediate form, the purpose, or one of the purposes, of which is to perform an electronic function, being a circuit in which the active and passive elements, and any of the interconnections, are integrally formed in or on a piece of material.^[96]

Whereas, the Act defines a ‘circuit layout’ as:

a representation, fixed in any material form, of the three-dimensional location of the active and passive elements and interconnections making up an integrated circuit.^[97]

The difference here is the representation of a circuit as opposed to the circuit itself, which is capable of protection.