PRESENTERS: Greg Turner, Principal

1. Australian Design Registrations PRESENTERS: Greg Turner, Principal

2. What is a design? • Definition: • A Design relates to a product. • In particular, the overall appearance of the product resulting from one or more visual features of the product. • A thing that is manufactured or hand made is a product. • A product must have some function of utility other than that of merely carrying the design. • The design can be 3D or 2D.

3. The Designs Process

4. Registration or Publication • Registration • Must be requested within 6 months of the priority date. • Not enforceable per se. • May lead to enforceable rights. • Registration is published on the Register of Designs. • Early Publication • Can be requested within 6 months of the priority date. • Defensive measure only. • Not often used, most applicant’s wish to delay publication.

5. Representations • Considerations • How many designs? • Is there broken lines, shading etc. • Are all the salient features of the design shown? • - Common 3-D views: front/rear/top/bottom/left side/right side/perspective • Are the representations clear?

6. How many designs? • It is theoretically possible to file an Australian design application including multiple designs, provided all of the designs are in the same Locarno class.  • However, a separate fee is payable for each separate design in a multiple design application.  The Australian Designs Office also issues a separate filing receipt, design number and subsequent design registration for each separate design.  • Accordingly, filing a multiple design application for several designs has the same effect as filing several, separate single design applications.  • It is not feasible to include several design embodiments in the initial application and pay a single design filing fee with a view to later deciding whether to proceed with all designs and pay the additional filing fees later. • Filing all design embodiments may not be the best strategy. As mentioned later, if small differences between designs are sufficient for separate registrability then they may also be sufficient to avoid infringement. They are creating prior art. • Better strategy is to file the embodiment with the most broken lines, the one with the least broken lines and maybe one design in between.

7. Formalities • Considerations before filing • Is the product title sufficient to allow classification and searching? • Does product title actually reflect the product in the representations? • Is informal filing required to delay publication by a few months? • - Exclude designer names • - Delaying allows amendments to be filed such as amendments to the Statement of Newness and Distinctiveness. Prior art may come to light shortly after filing, therefore delaying publication/registration could be advantageous in this situation.

8. Statement of Newness and Distinctiveness • All features shown in representations form the design (overall impression) – statement highlights those considered new and distinctive • Can be general or can emphasize certain features. • E.g., for headphones: Newness and distinctiveness is claimed in the features of shape and/or configuration of an audio listening system as illustrated in continuous lines in the accompanying representations. • No Statement: no emphasis placed on particular features. It would therefore be left to a Court/IP Aust. to decide whether the design relates to all or some of these characteristics of the design.

9. Statement of Newness and Distinctiveness (Cont’d) • Why Important? • Distinctiveness is considered in terms of overall impression of the design • Used in certification (examination) to identify features which may provide distinctiveness in comparison to the prior art. • Used in infringement proceedings for comparison of the infringing article to the representations filed. • Can be used to effectively “disclaim” certain features thereby covering “partial” designs which technically are not permissible.

10. Newness and Distinctiveness • A valid registration must be new and distinctive in relation to the prior art base • Prior art base: • - Designs published anywhere before the priority date. • - Designs used in Australia before the priority date. • - Design applications with an earlier priority date. • - Documents open for public inspection before the priority date. • - Often Facebook pages are now used as prior art. So warn your client’s marketing departments who often like to tease out new products early.

11. Newness and Distinctiveness (Cont’d) • Newness: identical to a design of prior art base. • Distinctiveness: substantially similar in overall impression • - mere similarity between two designs is not sufficient – there must be substantial similarity, i.e., there must be ample commonality in the overall impression, without the designs necessarily being identical • focus on the overall appearance of the product without focusing on small details • Infringement: an infringing product embodies a design that is identical to, or substantially similar in overall impression to, a registered design

12. Newness and Distinctiveness (Cont’d) • Overall impression is based upon comparison with a single design only - no mosaicing • When assessing substantial similarity: • More weight must be given to similarities between the designs than to differences between them • Context of feature(s) within the design as a whole • Freedom of the designer to innovate • State of development of the prior art base • - In the face of extensive or crowded prior art, small differences have greater significance • Have regard to the statement of newness and distinctiveness • - No statement of newness & distinctiveness: regard to the design as a whole.

13. Informed user • Newness and Distinctiveness must be considered according to the standard of the “informed user” • ‘The informed user is not a design expert, but nor are they necessarily an ‘ordinary user’ of the product’ • Be careful when constructing the informed user – can make or break your case!

14. Freedom of the designer to innovate • The perspective of the informed user is used to determine the freedom of the designer to innovate. • In Multisteps, expert evidence, submitted as being from the viewpoint of the informed user, was used to arrive at a summation of features of produce containers that could be considered present in containers of the prior art base and which constrained the freedom of the designer for commercial or technical reasons. • E.g., containers were typically required to be square or rectangular in shape with dimensions to facilitate packing for storage and transport; ventilation and drainage holes were required, feet would assist in achieving ventilation and drainage, pillars were preferably included to give structural integrity to the container and to provide substantially clear panels between the pillars. • The court used this information to determine whether the registered design was distinctive over the prior art base.

15. State of development of the prior art base • The court compared features of similarity and difference between the registered designs and a prior art design and made an assessment as to which features of the design the informed user would have found similar to the prior art and which distinctive, having regard to any features highlighted in the statement of newness and distinctiveness filed with the design application and the freedom of the designer to innovate. • As emphasised in Keller v LED Technologies Pty Ltd [2010] FCAFC 55, it is the registered design as shown in the representations, not the actual product bearing the design, that is to be compared against each single prior art design.

16. The test for infringement • The test for infringement is therefore a balance of factors in which the standard of the informed user is used to determine the scope of freedom of the designer to innovate in the design field, to assess the distinctiveness of the registered design in light of prior designs, and in comparing the registered design to the allegedly infringing product. Overall visual impression is key to whether infringement will be found. • Small differences are sufficient for separate registrability then they may also be sufficient to avoid infringement

17. Computer icons / Graphical interfaces • Although it is possible to obtain a design registration for a computer icon or graphical interface applied to an electronic device, the validity and enforceability of such design registration remains untested. • One value of such a design registration is that it could act as a potential deterrent to persons who review the Australian Designs Register before copying a computer icon or graphical interface which is the subject of a registered design. • Currently, do NOT request certification of such designs. The current view of IPAust. is that transitory features generated on a display are not ‘visual features’ of a design. • There is nothing in the legislation which requires that visual features be observable in the 'resting' state or when unconnected to electricity. As shown, below this view will likely be overturned once tested in Court.

18. Possible law changes Reconsideration of ‘virtual’ designs • As mentioned above, the current view of the Australian Designs Office is that transitory features generated on a display are not ‘visual features’ of a design. • The consequence of this is that the Designs Office will not (as a general rule) certify a design that relates to a graphical user interface or elements thereof – unless the hardware on which the GUI elements is itself new and distinctive. • There is nothing in the legislation which requires that visual features be observable in the 'resting' state or when unconnected to electricity.  The Government have requested IPAust. reconsider, and abandon, this aspect of its practice in assessing the validity of designs. Registrations in respect of partial products • Australian design law requires a design to be in relation to a product, and that a product is a thing that is manufactured or hand made. Partial products – i.e. parts of a product that are not separately made – are not permitted. • When combined with the Australian validity and infringement tests (which require the overall appearance of the product to be considered) this can present difficulties: it is not permitted to depict a partial product, but once a feature has been depicted it cannot be entirely ignored when determining validity or infringement. • You can however obtain protection for partial products by smartly using the Statement of Newness and Distinctiveness. • The Government would like this changed to enhance international harmonization.

19. Possible law changes • Deferral of design publication • Due to Australian design procedure, the latest publication date for a design is typically 6-8 months from the design’s earliest priority date. • There is no formal mechanism for deferring publication further. • Requests to introduce a deferred publication mechanism have been made, with the Governemtn’s recommendation being to consider this issue further. • The recommendation includes a proviso that if deferred publication provisions are to be provided they should be accompanied by changes to the infringement provisions to protect against innocent infringement of an unpublished design. • A grace period for self-disclosure • Australian patent law provides grace period provisions that operate to forgive a patent owner’s disclosure of their own invention – intentional or otherwise – before filing (provided certain conditions are met). This grace period is 12 months. • No such provisions apply to designs. • The Government has recommended introducing a 6 month grace period for designs and an accompanying prior user defence to infringement.

20. Greg Turner, Principal Sydney, Australia T: +61 2 9393 0100 E: greg.turner@spruson.com

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