5 Validity of Designs

As discussed in Chapter 3, a registered design owner does not have a legally enforceable right to the design until it is certified. The registered owner must request an examination of the design. The Registrar will examine the design to determine whether a ground of revocation exists. The primary purpose of the examination is to answer whether the design is registrable (except for designs that the Registrar must refuse to register).^[1] Section 15(1) sets out what is considered to be a registrable design.

The section sets out two requirements for a design to meet — it must be new and distinctive. Firstly, the design should be novel and different from others. A new design cannot be identical to another. Secondly, the design needs to be distinctive, inviting an enquiry as to its similarity compared with others. A distinctive design is not substantially similar in overall impression to another, requiring more than mere distinction.^[2]

The newness and distinctiveness of a design are judged against the ‘prior art base’ that existed before the priority date of the design. As discussed in Chapter 3, the priority date for many applications will be the date they are filed with IP Australia. Convention applications will retain an earlier priority date if an identical design was filed in a Convention country. Therefore, the design will be assessed against a pool of information that existed before protection was sought.

The requirements for newness, distinctiveness and the prior art base have separate provisions and are discussed in more detail below. During the examination, an examiner will conduct research to resolve the question of newness and distinctiveness. Such research involves identifying and collecting identical or similar prior art to the design submitted. They will assess the validity of the design and question whether it is new and distinctive. The test for newness is narrow; the examiner will determine if there are any identical designs. In practice, most objections will be based on distinctiveness. The examiner will compare the registered design to each of the prior art and use an objective standard to assess the validity of the design from the point of view of someone familiar with the product or similar products (known as the standard of the familiar person).

As discussed in Chapter 4, the examination of a design is not strictly limited to the registrability of the design. A design can be examined for lack of subject matter.^[3] If the design has no subject matter eligible for registration, it cannot meet the newness and distinctiveness requirements. The wording in section 15 makes it clear that a registrable design must first be a ‘design’ before it can be considered new or distinctive. IP Australia’s examination practice is to object because ‘…the design is inherently not new and not distinctive because it is not a design in accordance with the Act’.^[4] They will set out their reasons why it doesn’t meet the requirement under the Act.^[5]

The Prior Art Base

The remaining provisions and paragraphs set the parameters against which the design will be compared. Subsection 15(2) defines the prior art base. The potential pool of information that existed before protection was sought is substantial. The examiner will conduct investigations to locate identical or similar designs within this pool. Examiners will search, inter alia, national and international design registers, the Internet, and social media.^[6] Searching the prior art is a key skill and will be discussed in more detail in Chapter 6. Importantly, not only do designs from other designers make up the prior art base, but also disclosures made by the registered design owner. Examiners will investigate the social media presence of registered owners to identify publications of the design.^[7] As discussed in Chapter 3, individual pieces of prior art designs are often referred to as ‘citations’.

Under s 15(2) the Act, the prior art comprises:

When examining the design for newness and distinctiveness, the examined design will be compared individually to each piece of prior art. Gordon J, in LED Technologies Pty Ltd v Elecspess Pty Ltd, said:

…newness and distinctiveness are to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art. Put another way, a design combining various features, each of which can be found in the prior art base when considered as a whole but not in any particular piece of the prior art, is capable of being new and distinctive.^[8]

This is commonly referred to as the rule against ‘mosaicking’. In other words, when assessing a design, visual features of multiple pieces of prior art cannot be combined to conclude that the design is not new or distinctive.

Designs publicly used in Australia will form part of the prior art base.^[9] For example, a product bearing the design being sold to customers in Australia is public use. An examiner may use documentary material to establish the public use of the design. For example, a website, advertisement, or photo that offers the product for sale. Establishing the publication date can be, at times, challenging. The examiner must be satisfied with what was used, when that use occurred and whether the use was public to raise the ground of revocation.^[10]

IP Australia provides guidance on what is public use:

For a use to be a public use, the use must have taken place so that a member of the public would have been freely able to ascertain the design. It is not necessary to establish that that person actually ascertained the design – it is enough to show that that person could have freely ascertained the design.^[11]

For example, a product bearing the design sitting on a shelf in a store in Australia ready for sale would be public use. In addition, an item manufactured overseas and then imported for use would be public use. On the other hand, use that would not be public would include any use that occurs under an obligation of confidence.^[12] For example, an item manufactured overseas and later stored in a warehouse by employees would not meet the requirement.

Contests and issues relating to eligible prior art information can be explored during an examination. A registered owner may challenge the publication date of prior art, including designs publicly used in Australia. In addition, third parties requesting an examination may even present their prior art.^[13] The examiner must be satisfied to count that material as part of the prior art base. A hearing may be required to resolve contests over prior art and decide on inclusion. During conflicts over public use of design, a decision maker will determine what was used, when that use occurred and whether the use was public.^[14] In some cases where the material provided does not speak directly to either of these points, the material taken, as a whole, could carry an inference there was public use.^[15]

A common citation raised during examination is a design published in a document within or outside Australia.^[16] What a document includes is quite broad. The definition of a document is found in the Acts Interpretation Act 1901 (Cth).^[17]

Something that is ‘published’ has public availability. Contests over prior art published in a document can involve whether it has been made publicly. In Stanway Oyster Cylinders Pty Ltd v Marks,^[18] the Federal Court considered similar wording appearing in the Patents Act 1990 (Cth).^[19] In that case, Drummond J stated that:

‘[P]ublicly available’ involves, in addition to it being accessible to the public, that a person to whom the information is disclosed in that person’s capacity as a member of the public is free, in law and equity, to make use of the information. ^[20].

Eligible prior art published in a document should be made available to the public without obligations of secrecy or confidentiality.^[21] Emails sent under an obligation of confidence would not be considered published for the purpose of s 15(2). For example, in Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd,^[22] the Federal Court heard an appeal of the decision of the Registrar, where an obligation of confidence was found to exist for those receiving email correspondence containing representations of a design.^[23]

With such a broad definition going beyond mere paper documents, IP Australia consider the following information as published in a document.^[24]

• in printed publications, including magazines, newspapers, trade journals and catalogues
• on the internet, including on manufacturing websites, advertisements or articles
• designs on Australia’s Designs Register and Design Search database
• on the designs or design patent databases of overseas IP offices
• electronically, such as in emailed newsletters
• on social media platforms

The inclusion of documents published within or outside Australia was a marked difference compared to the prior art provisions in the 1906 Act. There is no requirement for the document to be published in Australia. Expanding the prior art base was believed to increase the likelihood that designs would be both new and distinctive. However, it opened the pool to much more information. The ubiquity of the Internet also poses challenges for registered owners. For example, leaks of products bearing a design from factories overseas that end up on YouTube are relevant prior art.^[25]

However, for the document to form part of the prior art base, it must have been published before the priority date. Like public use, determining a document’s publication date can be difficult. Depending on how self-evident the document’s age is, the examiner will need a clear publication date (typically a month or year).^[26]

Finding a publication date for internet material is not always straightforward. Some websites may have a date of publication on the webpage.^[27] Social media will typically have an associated date for the post.^[28] There are known methods to locate the publication date of a webpage if the website does not have a visible date. For example, you can use Google to discover a publication date.^[29] Website source code could also show clues about publication dates.^[30] Webpage publication dates, however, may be unreliable. A page viewed today may be different from what it was on a previous visit. Some websites will change or update and may not indicate whether changes have occurred and on what date. If, during an examination, the registered owner challenges the publication date of the prior art, they will have the burden to show the date is incorrect.^[31]

The Wayback Machine could be used to search for historical information or publications on the internet. The service has been routinely used within trade mark law.^[32] The Wayback Machine archives websites semi-regularly and provides date information of when the capture of a webpage has been made and archived. Although date information can be useful, it should be treated with caution. The provenance of website information can only sometimes be ascertained.^[33]

Given the visual nature of designs, images also form part of the prior art base, including those published online. Although the date an image has been uploaded to a website can reasonably be taken as the publication date, difficulties can arise where the date of an image file can be changed. When files are created on a computer, attributes will be assigned as part of its metadata, including date information. However, date information can be easily changed — directly with the file,^[34] or with the device settings.^[35]

Examiners will routinely search the Australian Design Search database and other international design rights databases to locate published designs identical or similar to the one being examined.^[36] When searching for published designs, examiners will take the publication date of a design as the date it was published for the purpose of s 15. Searching design registers is just one of the sources of published designs. Examiners will also search the trade mark and patent registers for designs. The designs may form part of the graphical representation of a filed trade mark or a part of a patent specification in the format of patent drawings. Each would be eligible prior art for the purposes of s 15(2)(b).

Read the case

Designs disclosed in applications

As discussed in Chapter 3, when a design application is submitted, the priority date will likely be the date it was filed with IP Australia. The design, including its representations, is published after it has been registered. Time, therefore, passes between these two events. Subsequent design applications can be filed, and examinations can be requested from that time onward. Under 15(2)(c), designs filed in Australia with an earlier priority date have priority over the one being examined, even if the earlier design was not published before the priority date of the examined design. These earlier designs form part of the prior art base if they meet the criteria set out in s 15(2)(c).

The earlier design can only be taken as prior art until it has been published. Practically, this means that the examiner can only find these on the Australian Design Search database during the examination. Use of a design yet to be published will likely be in contravention of section 61.^[37] If the earlier design is subsequently published and the design subject to examination is re-examined, it can become a valid citation.

Consider the following examples.

A registered design subject to examination was published in the Australian Register on 12 March 2023 and has a priority date of 1 February  2023. The design is examined on 24 April 2023.

Example of citing designs disclosed in applications, Mitchell Adams (CC BY-NC 4.0)

The examiner identifies a citation that was published in the Australian Register on 12 February 2023, with a priority date of 14 January 2023. The citation meets the requirements because the citation:

• is a design disclosed in a design application;
• it has an earlier priority date (14 January 2023 over 1 February 2023); and
• it was made available for public inspection (s 60) after the priority date of the examined design (published on 12 February 2023).

The second design with a priority date of 25 January 2023 cannot be cited as the registration design is examined before the design is published (published in the Australian Register on 30 April 2023). Such a registered design could not be relied upon, for example, by a third party contesting the certification of the design subject to examination.

Prior Publication or Use Exceptions

Notwithstanding the large pool of information that can form part of the prior art base under section 15. Sections 17 and 18 may exclude pieces of prior art during examination.

The Grace Period

Prior to 10 March 2022, if an owner or designer disclosed the design before seeking protection, the disclosure would prevent any subsequent design registration.^[38] For example, if a designer published their prototype design on social media before applying with IP Australia, the design would unlikely be new and a registrable design. During their review of the design registration system, ACIP found a grace period would assist designers and owners to protect their designs despite any disclosures, either inadvertent or through ignorance of the requirements under the Act.^[39]

The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) amended section 17 and introduced a broad 12-month grace period.^[40] If a design application is filed after publication or use of the design, the disclosure is disregarded if it was made within the 12-month grace period. Read section 17 below.

However, it is important to note that the grace period provision applies:

• to registered designs filed on or after 10 March 2022 or have a priority date on or after 10 March 2022
• where prior publication or use occurred on or after 10 March 2022 (see section 1A)

 Read

Subsection 17(1) creates the grace period for a design application by providing two categories of prior art to disregard. To be disregarded, the publication or use must have taken place 12 months prior to the priority date for the ‘subject design’. The two categories are captured in paragraphs (a) and (b). Notably, the design in each paragraph does not have to be the subject design. The wording permits the designer or owner to register slight variations of an earlier used or published design and still rely on the grace period. Firstly, any publication or use by a ‘relevant entity’ can be disregarded.^[41] A ‘relevant entity’ is defined in s 17(1D) and includes the registered owner of the design, their predecessors in title, and any designers who created the design. Secondly, any publication or use by persons or bodies that ‘derived or obtained the design from a relevant entity’ can be disregarded.^[42] The paragraph extends the grace period to instances where a third party publishes or uses a design with the consent of a relevant entity, such as a designer.^[43]

Subsection 17(1B) excludes certain publications derived or obtained from a relevant entity from the grace period. Subsection 17(1E) was intended to clarify the relationship between the grace period and section 18, discussed in more detail below.

With the introduction of the new section 17, timelines became important. The new subsection 17(1A) provided that the grace period only applied where the publication or use occurred on or after 10 March 2022. At the time of the amendments, the new subsection clarified that any use or publication before the amendment would not be eligible.

Since designs can be published online, a third party could copy a design after publication. The design owner may want to rely on the grace period if that third-party design is subsequently used or published before they intend to apply for protection. To rely on s 17(1)(b), the applicant must show the third party derived or obtained the design. However, showing this can be onerous for the applicant. Subsection 17(1C) presumes a third party (that is not a relevant entity) derived or obtained the design from a relevant entity once the conditions in paragraphs (a) and (b) are met.^[44] The use or publication of the ‘other design’ can be disregarded under paragraph 17(1)(b).

Read the following example that demonstrates the application of subsection 17(1C) from the Explanatory Memorandum of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020. An accompanying timeline is below.

Prior publication of an artistic work

The protection of designs can overlap with the protection afforded under the Copyright Act 1968 (Cth). Covered in more detail in Chapter 9, the overlap forms when an owner of copyright in a two-dimensional artistic work reproduces the work in a three-dimensional form.^[45] For example, the drawings for the Apple Watch can be protected under both regimes once produced in three dimensions. If an owner registers the design, copyright protection in the artistic work is typically lost. The artistic work, however, can remain a valid citation for the purpose of examination. Section 18 permits disregarding the use of an artistic work in determining whether the design is registrable. Section 17 will still govern any use or publication of the artistic work during the grace period.^[46] Section 18 will be considered where artistic work was used before the grace period.

 Read

Read section 18 below to understand how a relevant citation can be excluded from the prior art.

Subsection 18(1) sets out three criteria that must be met:

• There is an artistic work in which copyright subsists
• There is a corresponding design application
• The corresponding design application was made by, or with the consent of, the owner of the copyright (including the design owner having derived title in the design from the copyright owner of the relevant artistic work).

If subsection 18(1) criteria are met, the copyright owner’s use of the artistic work is the subject of subsection 18(2). Attention turns to whether the artistic work is ‘applied industrially’. This means selling, leasing or offering for sale or lease products to which the corresponding design had been applied industrially. The use of the artistic work can be disregarded from the prior art if they do not fall within these categories.

 Read

Section 18 defines ‘applied industrially’ by reference to reg 12 of the Copyright Regulations 2017.

Indicators a design has been industrially applied include:

• Goods bearing the artistic work that has been mass-produced.^[47]
• An entity involved in industrial exploitation offers for sale goods bearing the artistic work or similar types of goods.^[48]

The Requirement of Newness and Distinctiveness

Given that the Act sets the parameters for what is included in the prior art base, how is the designated design compared to the prior art? Section 16 sets out the enquiries to test whether a design is registrable. Subsection 16(1) deals with new designs, while subsection 16(2) deals with distinctive designs. Subsection 16(3) observes the provisions relating to the prior art base in section 15.

 Read

A design is only registrable if it is new compared to individual pieces of prior art at the priority date.^[49] A design is new unless it is identical to another design. The comparison requires consideration of all the visual features of the design. The narrow definition means that slight differences in appearance may be sufficient to make it new. The test was intended to exclude identical designs from registration.^[50] During an examination, the designated design is likely to be considered new unless it has been copied or the registered owner has published or used the design before filing an application.

When assessing a design, the examiner will likely consider the product to which the design has been applied.^[51] IP Australia notes, ‘A plastic milk crate can also be used as a stool, a step ladder, a bookcase, a container, a motorcycle carrier rack, etc.’ Therefore, searching the prior art base may yield identical (or even similar) designs when looking at alternative product names or different classifications. IP Australia notes, ‘If the design under examination is called a stool but looks like a milk crate, the examiner should also consider searching for milk crates.’ Assessing newness is purely visual, and the product’s purpose is irrelevant.^[52]

The wording of section 15(1) means that the design should be ‘new’ and ‘distinctive’. If the design is new, it also must be distinctive. During examination, the design will then be assessed for distinctiveness against individual pieces of the prior art.^[53] A design is more likely to be assessed under this standard. Subsection 16(2) states that ‘a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design’. Any slight differences in visual appearance that would make the design new may not make it distinctive.

Under the subsection, consideration must be made to the ‘overall impression’ of the design. This concept differs from the ‘overall appearance’ of a product discussed in Chapter 4. Assessing the visual features that influence the overall appearance of a product is relevant to determining the subject matter and scope of a design. Overall impression, on the other hand, invites assessing the product’s appearance as a whole. The Macquarie Dictionary defines ‘impression’ as:

1. a strong effect produced on the intellect, feelings or conscience
2. the first and immediate effect upon the mind in outward and inward perception; sensation.
3. the effect produced by an agency or influence
4. a notion, remembrance or belief, often one that is vague or indistinct

Therefore, the visual features of the product are examined to see their effect on the perception of the product’s appearance. This feature of the distinctiveness requirement reflects the design approach (or method) and recognises the importance of design in product differentiation.^[54] Small changes made to the visual features of a product may make it new but do not affect the overall impression of the product. A more significant change may produce a different impression of the design.

An assessment of impression recognises it is not necessary to scrutinise every small detail or visual feature. The inclusion of ‘similar’ indicates that a similar impression is sufficient and does not match exactly.^[55] Mere similarity, however, is not enough. The comparison between the design and a piece of prior art must be ‘substantially similar’.

Overall, subsection 16(2) requires focusing on the product’s overall appearance without scrutinising individual visual features and counting the differences between designs. The assessment is, therefore, considered a ‘qualitative’ one,^[56] with subjective considerations. Nicholas J in Hunter Pacific International Pty Ltd v Martec Pty Ltd explained that:

Precise mathematical comparisons or analyses of measurements or ratios have no role to play in determining whether or not the two designs create an overall impression that is substantially similar.^[57]

Further assistance on the distinctiveness inquiry is found in section 19. Where an examiner, hearing officer or court is called upon to determine a design is substantially similar in overall impression to another design, the Act provides a list of relevant matters to be considered.

Substantial Similarity

In deciding whether a design is distinctive, a person must make a judgment regarding all the visual features of the design and determine if they are substantially similar in overall impression. Section 19 provides factors on how to apply the test for distinctiveness. The section intends a side-by-side visual comparison between the registered design and the cited prior art design. In the words of Yates J in Multisteps Pty Ltd v Source & Sell Pty Ltd:

… although the test is based on impression, it is not based merely on a casual comparison between designs for a given article. There needs to be a studied comparison based on the prescriptions of s 19 of the Designs Act.^[58]

Subsection 19(1) sets the starting point, where more weight is given to similarities between the designs than to the differences between them. Although not a very informative instruction, the comparison is qualified by subsections 19(2) and (3). Each of these considerations is made from the perspective of the familiar person. Ultimately, if a familiar person would consider a difference in visual feature(s) to be particularly important in forming the overall impression of the design, these would outweigh any similarities between the registered design and the prior art design.

 Read

When assessing the distinctiveness of a design and exploring the factors above, it is essential to understand the nature of the product. It can help identify the familiar person for the purpose of subsection 19(4), as that person would have direct knowledge of the product and its intended use.^[59] Identifying the product and its intended use can assist in identifying the prior art base for subsection 19(2) paragraphs (a) and (d). For example, a design for a watch can be for a mechanical watch or a smartwatch.

In addition, how the design is displayed or viewed normally can play a role in assessing whether a design is distinctive. For example, Hunter Pacific International Pty Ltd v Martec Pty Ltd involved a comparison between ceiling fans. Nicolas J stated that:

… it is the lower hub to which the eye is likely to be drawn when an apparatus made to the design is installed in a ceiling as part of a complete ceiling fan and it is the base of the lower hub that will contribute most to the overall appearance ….^[60]

Designs may also have internal features, like shape, that may inform the impression of the design. For example, those products that are ‘opened’ as part of their normal use, so internal features are then visible.^[61]

In Apple Inc.,^[62], the relevance of internal features of a design was raised when assessing distinctiveness. Apple had applied to protect the design of a case (which you may recognise as their AirPods Pro). During the examination, the examiner identified a previously registered design (specifically Design 202011411 for a ‘case’) that formed part of the prior art and was considered substantially similar in overall impression. The representations of the design depicted the design of the case in closed and open positions. The prior art, however, only depicted a design for a case in the closed position. Submissions in response to the examination report did not overcome the grounds for revocation, so Apple requested a hearing. 

The examiner’s view was that:

… in ‘normal use’ the internal visual features of this product become visible, and I do not discount this. The product, however, is a case. This case is used for transport, storage, and charging of the earphones it houses. Whilst this case does open to remove and insert its earphones, its configuration is closed whilst it performs its primary functions and purpose.

Whereas Apple’s view was:

… the correct approach here is to first consider whether the interior of the Design contributes to the overall impression of the design. If the answer is yes, … then any prior art that does not show an interior … must be disregarded as not capable of rendering the [Design] as lacking in newness or distinctiveness.

The Hearing Officer agreed that it was right to consider how the interior of the design contributes to the overall impression. This internal visual feature, however, was the only difference between the two designs, and the similarities outweighed this difference.

Read the case

 

Although a design application will include representations of the design from multiple perspectives, citations of prior art may only be of a design from a single perspective. IP Australia has indicated that this can lead to a situation where the examined design may be compared to hidden views of a cited design.^[63] In World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd,^[64] Jessup J confronted a comparison between a design and a design that was published in a brochure. The cited document, however, showed the product (a vacuum cleaner) in a front perspective only. Jessup J assumed that the product was symmetrical and noted, ‘the impression obtained from that angle permits the viewer to make a reasonable assessment not only of the side but also of the front, of the vacuum cleaner’.^[65] IP Australia indicates that hidden views cannot always be inferred and that any assessment of hidden views of a design is dependent on the angles supplied as part of the cited design. Helpful considerations for inferring the impression of hidden perspectives include^[66]:

• The expected or actual symmetry of the product.
• How the available views of the product limit the possible characteristics of the ‘hidden’ side.
• The appearance that would usually be expected of such products.
• Types of features to be expected on the ‘hidden’ side.

Standard of the Familiar Person

When deciding whether a design is substantially identical in overall impression, the decision maker must apply the standard of the familiar person.^[67] Critical for the distinctiveness inquiry, the impression of the design is obtained from the perspective of a hypothetical person familiar with the products that bear the design. Therefore, an impression of a design is not obtained from an uninformed casual glance.^[68]

Applying the standard practically affects the attention directed to a design and its visual features. The standard can influence which similarities and differences are most noticeable, what a familiar person may look out for in a design or what features are essential. The subsection requires:

In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).^[69]

The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) amended section 19 to clarify the standard. For applications filed prior to 11 September 2021, the standard of the informed user was applied. Subsection 19(4) read before the amendments:

The standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).

Under both versions, the familiar person / informed user is the point of view from which the decision maker must apply when assessing substantial similarity in overall impression. The impression formed of the design is informed by the knowledge base of the familiar person or informed user at the priority date.

 Read

The amendment from informed user to familiar person followed the interpretation of s 19 that Yates J took in Multisteps Pty Ltd v Source & Sell Pty Ltd. At [63-67] Yates J said.^[70]

Therefore, the concept of the familiar person is a flexible one. It is a hypothetical person that represents a class of people familiar with the product to which the design relates (or similar products) and not one unaware of the product. Under the current provisions, it is clear that the familiar person does not have to be a user of the product bearing the design. The familiar person may or may not necessarily be a design expert and can include consumers, experts, specialists, and skilled tradespeople.^[71] The person is aware of the functional requirements, intended purpose or uses and aesthetic visual features of such products but does not have to be familiar with the exact product being examined.^[72]

The registered owner may present evidence or arguments during examination to help determine and describe the familiar person. Declarations can assist in identifying the familiar person but may not help demonstrate the standard to apply. The examiner or hearing officer may present their own views on who the familiar person is.

Read the case

 

The hypothetical person is familiar with products that are the same or similar to the product described in the application. There can be several people who are suitably familiar with the same or similar products. Classes of people relevant to the standard can be affected by the intended use or purpose of the product. For example, homeowners or consumers are the ultimate users of refrigerators. Still, an engineer or tradesperson who replaces parts of the fridge is likely to be a familiar class of persons with products like refrigerator compressors.^[75]

Gordon J in LED Technologies Pty Ltd v Elecspess Pty Ltd, set out the following considerations of the familiar person or informed user:

1. is reasonably informed; not an expert but more informed than an average consumer;
2. is an objective standard. However, expert evidence may still be adduced in court to assist the Court in applying the informed user concept;
3. focuses on visual features and is not concerned with internal features or features not visible to the naked eye.^[76].

Kenny J in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd made a similar assessment when assessing the substantial similarity of two garments:

In the present context, women as a class are the ordinary users of ladies’ garments, but not all women have the requisite degree of familiarity to be described as informed users. Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged.^[77].

Kenny J again in Review Australia Pty Ltd v New Cover Group Pty Ltd, stated:

The notional user must be informed, in the sense that the user is familiar with ladies’ garments. The informed user is not an expert, but must be more than barely informed. The focus for consideration is on eye appeal and not on internal or less visible manufacturing features.^[78].

Identifying the familiar person can be influenced by the cost and complexity of the products.^[79] The impression they will have of the design is only formed at the priority date. Anything that has happened since, therefore, is not relevant. In Apple Computer Inc [2007] ADO 5, the Hearing Officer noted about the design of USB connectors at the priority date:

I should further emphasise that the standard of the informed user must be applied as at the priority date. [s.15(1)]. If this USB connector became commonplace, it might well be the case that informed users would change their habits in certain environments such that they would look inside a USB connector to assess whether it was a standard four-contact connector, or the ‘enhanced’ nine-contact connector. But at the priority date of the design the USB Type-A connector was, to the best of my knowledge, only available in the standard 4-contact version. And with that connector there was never any reason for the user to look inside the connector and notice the contact configuration.^[80]

The Section 19 Requirements

 Do

Explore the requirements for section 19 below with a summary involving a floor lamp.

What follows is a discussion of the distinctiveness inquiry and the factors contained in s 19.

Similarities and differences

Subsection 19(1) is the starting point for a decision maker on whether a design is substantially similar in overall impression. It requires them to ‘give more weight to similarities between the designs than to differences between them’. Given that the test is about impression, the comparison is not mathematical.^[81] Tallying similarities and differences between two designs does not mean a design is or is not substantially similar in overall impression. Attention to similarities must lead to a conclusion that the two designs are similar in impression. The two designs do not need to match — they can have differences but cannot be merely similar. Attention to differences can prove more useful in navigating the assessment. Differences can intrinsically help identify when a design is substantially similar or not. Visual differences that a familiar person would pay attention to may help a decision-maker conclude the design is distinctive. Conversely, differences that would be considered minor or have no functional value/advantage could be overwhelmed by the similarities between the designs, leaving the impression that they are similar.

Read the case

Differences can be an important factor when applying the standard of a person familiar with the product.^[83] A single difference that the familiar person would consider necessary in forming an impression of the design can outweigh any similarities between the two designs.

Read the case

Read the case

State of development of the prior art

Subsection 19(2) sets out additional considerations that can inform the comparison of designs. The additional factors provide flexibility to the decision maker and overlap with the others. In practice, all of the factors are followed in a structured step-by-step way to determine whether a design is distinctive while considering the standard of the familiar person.

Paragraph (a) requires the decision maker to ‘have regard to the state of development of the prior art base for the design’. This factor is quite significant because it can help provide context for comparing the two designs. As discussed above, the prior art base is the information that existed immediately before the priority date for which a design is assessed for newness and distinctiveness.^[88] Considering the prior art base reflects that the comparison cannot be made in isolation and acknowledges that the design development process is temporal.^[89] IP Australia provides the following guidance when taking into consideration the prior art base for a design:

If the prior art base is well developed (i.e. there are a lot of existing designs), we can expect familiar persons / informed users to be more aware of small differences between competing designs. If the prior art base is less developed, differences will probably need to be larger for competing designs to be considered distinctive.^[90]

However, this factor is not made in isolation. Differences present between designs will still need to be viewed from the standard of the familiar person. Despite a very well-developed prior art base, differences that do not affect the familiar person’s overall impression are unlikely to lead to a finding of distinctiveness.

To determine whether the prior art base is well developed, searching the Designs Register can aid a decision maker. Searching product names (variations thereof) and Australian Design Classification Codes on the Australian Design Search System can provide useful results of prior product designs (more information about searching is discussed in Chapter 6). In addition, multiple pieces of prior art identified during the examination process may help to infer that the prior art base is well developed.^[91] During hearings and appeals, owners and expert witnesses can provide evidence on the development of the prior art base.^[92]

Information about the development of the prior art base can assist in navigating the distinctiveness assessment. For example, designs for smartphones have a well-developed prior art base. Since 2007 and the launch of the iPhone, touchscreen smartphones and similar products have proliferated.^[93] Such proliferation is evident from the annual development of Apple iPhones and other smartphones on the market. Evidence that Apple Inc. has previously presented in front of the Australian Designs Office has identified that amongst a well-developed prior art base, users are accustomed to picking differences between touchscreen smartphone designs by looking at features including:

• Arrangement and shape of ports;
• Extent of screen coverage;
• Body shape, in particular at the edges;
• Detailing and finish.^[94]

Statement of newness and distinctiveness

As discussed in Chapter 3, statements of newness and distinctiveness are optional at the application stage. The presence of a statement, however, can direct the attention of the decision-maker when navigating the distinctiveness inquiry. For an applicant, the statement can identify those visual features that advance the design over the prior art base.

If there is a statement of newness and distinctiveness, s 19(2)(b)(i) requires the decision maker to consider the visual features mentioned in it when assessing the design’s overall impression. If the statement refers to elements that relate to a part of the design, s 19(2)(b)(ii) requires the decision maker to have particular regard for that part of the design but in the context of the design as a whole. It must be kept in mind that a statement does not make a particular visual feature or features more prominent than others in the design. It is still necessary to assess distinctness based on the overall impression of the design. In addition, the statement does not make the familiar person any more likely to be aware of the feature(s).^[95]

At a practical level, the statement draws the decision maker’s attention to aspects of the design. If these features are not present in the prior art design, the design subject to examination may be found to be distinctive.^[96] Remarks that a statement of newness and distinctiveness that narrows the scope of a registered design is likely overstated.^[97] Statements that identify particular visual features, like colour or ornamentation, applied to the whole of a design do not narrow the scope of the design.

It is common for applicants to couple a statement of newness and distinctiveness with representations that include broken lines to indicate generic features of a product. The culmination of these elements is to identify particular visual features that relate to only part of the product (s 19(2)(b)(ii)). The decision maker will pay close attention to these features when comparing the design against the prior art base. Again, it is unlikely that the statement widens the scope of the registered design,^[98] but the representations that fulfil that function. For s 19(2)(b)(ii), the decision maker will not completely ignore all the parts of the design. The focus will reside on those sections identified by the application that affect the impression of the design.

IP Australia occasionally receives an application containing a statement of newness and distinctiveness that is non-specific and vague as to which features are intended to draw the decision maker’s attention. For example, in Reckitt Benckiser Inc [2008] ADO 1, the applicant Reckitt Benckiser Inc filed three applications for bottle designs. Explore the designs here: 200513645, 200513642, 200513641. Each application contained a statement of newness and distinctiveness that read, ‘Each feature of the design considered separately or in combination with any other feature or features.’ The statement appeared not to indicate any particular visual feature of each design. The applicant requested a hearing after examination, and the Hearing Officer needed to interpret the statement. The Hearing Officer noted:^[99]

43. The construction of this statement is problematic. It doesn’t identify any particular visual feature or features of the design. It merely refers to features, with an ambit claim of them being alone, or combined with one or more other features. Taking this at its simplest, I could opt to identify a visual feature as the shape of the basic container as shown in each of the present designs – in isolation from any other feature shown in the design – leading to the conclusion that all the present designs lack distinctiveness since the basic container is clearly shown in the anticipatory documents. And as the statement cannot be amended in any effective manner, this conclusion would inevitably lead to revocation of all designs.

44. However, I am not satisfied that this is the proper approach to take to such statements of newness and distinctiveness. I think that it is proper to recognize that with the implementation of the Designs Act 2003 the significance and use of the statement of newness and distinctiveness was not well understood by users. And this led to some users including statements like those of the present, supposedly to keep the owner’s options open. In the absence of identification of any specific visual feature in the statement, I think the preferable construction of such ambit statements is to interpret them in a manner such that the design is most likely to satisfy the requirement of being distinctive. That means interpreting the statement as being a reference to the combination of all visual features of the design as shown in the representations [which, arguably, means that the statement adds nothing to what is shown in the representations].

Therefore, drafting a statement of newness and distinctiveness needs to be taken with care. Ambit statements will likely not direct the decision maker’s attention. A statement is more likely required when drawing the attention of an examiner, hearing officer or a court. Statements can reinforce the steps a decision maker will follow with well-developed prior art bases.

Where there is no statement, subsection 19(3) directs that the decision maker must have regard to the appearance of the design as a whole. In the absence of these, the decision maker will follow the steps already discussed in assessing the distinctiveness of a design. Certain visual features will become more prominent through exploring the prior art base or what a familiar person may pay attention to.

The purpose and role of statements of newness and distinctiveness have been debated since their introduction with the 2003 Act. ACIP described submissions they received during the review on statements of newness and distinctiveness:

ACIP received more submissions on the SoND mechanism, which does appear to have caused some confusion. Practitioners observed that SoNDs can be rambling and descriptive; that a wide range of practices in their use has been made; that the Designs Examiners’ Manual of Practice and Procedure itself is continuously redefining its position on the SoND, and that courts have interpreted the impact of SoNDs in inconsistent ways.^[100]

The cases identified were LED Technologies Pty Ltd v Elecspess Pty Ltd  (2008) 80 IPR 85 (where the statement was influential); Review 2 Pty Ltd v Redberry Enterprises Pty Ltd (2008) 173 FCR 450 (the court focused on certain aspects of design even without a statement); Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) 214 FCR 323 (the statement referred to dotted lines, which court held could not be disregarded so it was therefore of minimal influence).

Amount, quality and importance

Subsection 19(c) requires a decision maker to notice where similarities reside between two substantially similar designs. The instructions read, ‘if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole.’ The subsection allows for a qualitative assessment of the two designs after exploring the similarities and differences. Nicolas J observed in Hunter Pacific International Pty Ltd v Martec Pty Ltd, that the subsection was significant for two reasons:

First, it assumes that a product may be substantially similar in overall impression to a registered design even though a particular part of the product is not substantially similar to the corresponding part of the registered design. Secondly, it requires the Court to make a qualitative rather than a purely quantitative assessment of the visual similarities and differences between the two designs when deciding upon the question of infringement in much the same way as it must when applying the test of substantiality in the field of copyright law.^[101].

IP Australia’s guidance indicates that decision makers are to ‘assess the relevant visual features on the basis of their importance to the design, bearing in mind the purpose and operation of the product’.^[102] Differences, therefore, play an interesting role here. If visual features of the design are absent from a cited design (or vice versa), the significance of their absence can determine their distinctiveness or lack thereof.^[103] In Hunter Pacific, the court examined the amount, quality and importance of similarities when assessing the substantial similarity in an infringement action. Nicolas J observed that when comparing two ceiling fan designs, those similarities were located in an area of significance for a person familiar with the product. The similarities were located on the fan’s lower sections, which were closer to the user during operation. The differences at the top were insignificant and were out of view for the user.

Freedom of the creator of the design to innovate

One of the more interesting factors to consider is that in paragraph s 19(2)(d), the decision maker must ‘have regard to the freedom of the creator of the design to innovate’. The factor best reflects the role of a designer and the design method. During the design process, a designer must consider the restrictions or requirements of the object they are creating. Functional requirements or user preferences can drive these considerations. These requirements speak to the heart of design as a process. Nicolas J in Hunter Pacific observed that section 19(2)(d) ‘reflects what has been a long standing concern that registered designs not impede the natural and ordinary growth of industry by preventing others from making products that have features of shape and configuration that are common to a trade’.^[104]

IP Australia states that the factor in paragraph 19(2)(d) modifies the distinctiveness assessment in two ways.^[105]

• If the overall appearance is partly determined by external factors over which the designer has no control, it is appropriate to assess newness and distinctiveness based on factors under the designer’s control.
• If a design is particularly new and is recognised as such by the public, a subsequent similar design will need to be significantly different to avoid a lack of distinctiveness.

Practically, this enables a decision maker to ignore similarities between two designs that were unavoidable for the designer. For the purpose of the distinctiveness assessment, this factor also feeds into applying the standard of the familiar person. The familiar person would assume the presence of these features or constraints. Other visual features would be given more weight when differentiating designs.

Features that a designer may have no control over include:

• Features required for the product to function.^[106]
• Regulated features.^[107]
• Industry standardised features.^[108]
• Features dictated by fashion.^[109]
• User-demanded features.^[110].

Given that visual features ‘may, but need not, serve a functional purpose’,^[111] this factor is relevant to the distinctiveness inquiry. As distinctiveness is assessed at the priority date,^[112] the freedom of the creator of the design to innovate will also need to be considered at this date. IP Australia provides guidance on how this requirement needs to be assessed in the context of the Australian market.^[113] Given that the prior art base can include documents published in Australia and overseas,^[114] external factors imposed on the designer may not necessarily originate in Australia.

Although IP Australia indicates that ‘particularly new’ and ‘recognisable’ designs influence the freedom of a designer to innovate,^[115] any comparisons between a ‘particularly new’ design and a subsequent design will be governed by the factors already discussed. This particular concept or ‘modification’ comment originates from the 1991 European Commission Green Paper on the Legal Protection of Industrial Design, which states:^[116]

5.5.8.3. … the more limited the freedom of the designer is in developing his design due to technical or marketing constraints (standardization, mechanical or physical constraints, necessity of taking into account deep-rooted marketing requirements by the clients, features imposed by fashion), the more weight has to be given to small differences or variations as constituting an independent development.

5.5.8.4. On the other hand, where the freedom of the designer is unconstrained large and the design represents something substantially new and immediately perceived as such by the relevant public, designs representing quite a wide range of alterations or variations could be considered as infringing, because the strong personal character of the new design inevitably commands an overall impression of a substantial similarity, even if the differences are quite easily noticed.

IP Australia describes a probable situation as:^[117]

When a fundamentally new product design comes on to the market, a competing product that is only slightly different in appearance from the new and original product design is more likely to be seen as an imitation. When assessing newness and distinctiveness of competing designs in this situation, we require a greater degree of differentiation than would otherwise be the case.

The presence of a ‘competing’ design already in the prior art base will prevent any subsequent design from being registered unless it is new and distinctive. The factors of similarity/differences, state of development of the prior art base, presence of a statement of newness and distinctiveness, amount, quality and importance from the standard of the familiar person will determine this. If a designer is unconstrained and has the freedom to innovate, it is likely that differences will be required to find distinctiveness. The presence of a competing and well-recognised design is not a constraint on the designer. Concepts of public recognition are more based on concepts found in trade mark law and do not have a place in the substantial similarity assessment.^[118] The comparison is a visual one.

Overcoming an Objection During Examination

To register a design, it must be found to be new and distinctive compared to the prior art base.^[119] During an examination, the examiner will raise the ground of revocation if they determine the design is not new or distinctive.^[120] If the ground is raised, the registered owner receives notification in the form of an examination report. The owner is then provided the opportunity to respond to the adverse examination report. Facing a ground of revocation, the registered owner has several options to respond, including:

• Submitting a written response to the examiner containing legal arguments that demonstrate that the examiner’s objection is incorrect or should not apply to certain prior art identified in the examination report.
• Supplying relevant information about the relevant familiar person that supports legal arguments on distinctiveness.
• Submitting a declaration that applies the grace period to relevant pieces of prior art.
• Submitting a declaration that applies section 18 to a previously published or used artistic work.
• Submitting a request to amend the design.

What a registered owner or agent may choose to do on this list will depend on what was raised in the examination report.

As discussed above, the distinctiveness inquiry is a qualitative one. A written response to the examiner could contain legal arguments as to why an identified citation is not substantially similar to the design subject to examination. The Section 19 factors are flexible to present an alternative view of why the design is distinctive. It could be identifying and bringing attention to differences that stand out against similarities between the designs. Simply pointing out differences in detail, however, is unlikely to succeed. The arguments should show that the different features substantially affect the overall impression of the design in comparison with the prior art citation.

That statement of newness and distinctiveness may also be utilised in this regard. Where there are similarities between two designs — either the result of generic features of the product expected of a familiar person or the result of external factors affecting the freedom of the designer to innovate — their importance could be downplayed.

Relevant information can be submitted in a declaration to support legal arguments as to why a design is distinctive. The information may pertain to the development of the prior art base, the freedom of the designer to innovate or the standard of the familiar person.

Information about the development of the prior art could be declared by those familiar with the product to which the design relates. When relying on the freedom of the designer to innovate, the onus is on the registered owner that this consideration applies. It may require the submission of expert evidence.

Declaring information about products for the purpose of the standard of the familiar person will be assessed carefully and likely taken at face value. IP Australia will examine the information to discern whether it demonstrates that the declarant is just a familiar person or if their views represent the appropriate standard of the familiar person.^[121] IP Australia pose the following questions to navigate the distinction:

• How close is the declarant to representing the familiar person / informed user?
• Is the declarant a user, distinct from a manufacturer/supplier/designer? 
• If the declarant is an actual user, is the declarant’s use typical of all users or merely of a subset of users?
• What is the basis for accepting any of the declarant’s assertions as relating to the typical familiar person / informed user rather than to their own particular views?
• If the declarant lives in another country, what is the basis for accepting their views as relating to the familiar person / informed user in Australia?
• How does the declarant justify their assertions, especially those that seem less credible?^[122]

As it relates to citations of prior art, the publication date can also be challenged. For a document to form part of the prior art base, it must be shown that the date of publication preceded the priority date of the design under examination.^[123] Depending on the type of document and its age, it may be challenging to ascertain the publication date. Where a document is self-evident to be quite old, IP Australia will take the mere existence of the document as forming part of the prior art.^[124] Documents published just months before a priority date may be more difficult — clear evidence of the publication date after the priority date would need to be submitted. Documents from the internet may present more difficulties, as explored above. Evidence of publication from the Wayback Machine can be challenged, as the level of certainty about a date on the service can be ‘below full confidence’.^[125]

If the examiner disagrees with the legal arguments and issues a further report maintaining the ground of revocation, the registered owner may request to be heard. The matter then will go before a Hearing Officer for determination. The registered owner or their agent will then prepare submissions and evidence. Evidence is submitted in the form of a declaration.^[126]

An examination report may raise the ground of revocation not because the design lacks distinctiveness but because it is not new. Prior art that contains an identical design to the one being examined may trigger the report. It is more likely than not that self-publication or use of the design was found in the prior art. Applications filed on or after 10 March 2022 can rely on the 12-month grace period provisions to disregard the citation from the prior art. Examiners will not apply the grace period provision based on their own research — identical designs in the prior art will trigger the ground of revocation.^[127] The registered design owner under examination will be required to submit information about the prior publication or use. Again, this will be done with the use of a declaration. IP Australia provides the following guidance on the relevant information and evidence that are useful in supporting a claim that the grace period applies to disregard a piece of prior art:

• Dated screen captures of earlier publications.
• Wayback Machine screen captures websites controlled by the owner at the relevant time.
• Declaratory confirmation that the owner controlled the social media account or website at the relevant time of a publication.
• Sales information and marketing plans. This could include dated information about scheduled product launches or other key dates for the release of marketing material.
• Screen captures of the social media accounts and histories of administrator(s) or controller(s) of those accounts.
• Copies of internal emails with instructions for staff or external providers; this could include instructions to make designs publicly available on particular dates.
• Information and evidence which establishes that there has been an unauthorised disclosure of the design.
• Photographs or other media, such as news articles, corroborate a public availability at a relevant time.^[128]

The information will be contained in a declaration. The declaration should show dated evidence showing when the design was published or used, as well as information that the publication or use was made by a relevant entity or by persons who derived or obtained the design from the relevant entity. Evidence of the publication or use should then be annexed to the declaration. The declarant needs to be someone who has direct knowledge of the information, publication and events. If the link between publication or use to the owner needs to be clarified, the owner must address this in the declaration.

In addition, a registered owner may want to apply the s 18 copyright provision to disregard an artistic work in the prior art. Again, a declaration can be submitted during examination to remove the piece of the prior art. To rely on s 18, the declaration will need to provide information and evidence that satisfies the criteria under the provision:

• The citation is a relevant artistic work in which copyright subsists.
• The design under examination is a corresponding design.
• The design application was submitted by or with the consent of, the owner of the copyright.
• The cited publication must not have been applied industrially.

The information in the declaration will likely cover the series of events that led up to the application of the design. If the registered owner differs from the copyright owner, evidence of consent to file the design application will be needed. Evidence of a transfer of ownership can be useful (e.g. an assignment of copyright).^[129]

In an alternative strategy, a registered owner may request an amendment to the design registration.^[130] Any request for amending the registration during the examination must not increase the scope of the registration,^[131] or alter the scope of the registration by including matter that was not in substance disclosed in the original design application, representations or other documents.^[132] Under s 66, the amendments are available for both grounds of revocation (design is not a registrable design, or the design should not have been registered because of s 43).

Amendments can be owner initiated or suggested by the examiner. The latter is likely identified in the examination report as a path forward to certification.^[133] IP Australia has identified that it is ‘quite rare for an amendment request to be successful and lead to a ground for revocation being withdrawn and the registration being certified’.^[134]

Anatomy of a Design Decision

 Do

Explore this decision of the Australian Designs Office to see how a hearing officer navigates the section 19 factors in a distinctiveness inquiry.