Designs
Is there a design within the meaning of the Designs Act 2003?
s5: design = overall appearance of a product resulting from one or more visual features of pattern
or ornamentation (2D) or shape or configuration (3D)
Is there a ‘product’ to which the design is applied?
‘Possible design’
‘Displayed on’ the product – NO - designs for screen displays on computers, phones and other
such devices, intangible will not be eligible, the images are not products themselves but are
displayed ON a product.
‘Embodied in’ the product – YES - it is a design
Is the ‘possible design’ either due to, or determined by, or inseparable from, the function of the product? Does
the design serve a functional purpose? (… if so then probably not a registrable design)
s7(2) *no protection for ‘functional aspect’– competitor may copy the functional aspects (alone)
of a registered design without infringement – may copy a ‘visual feature’ if it is inseparable from
a functional purpose
Definition of ‘design’ s8 – ‘design is used in relation to a product’
Ø Re Wolanski’s Registered Design - design and product inseparable, a ‘neck-tie support’ could not
be registered because the shape defined the article
Ø Kestos Ltd v Kempat Ltd - a brassiere could not be registered – same reaso
‘Product’ (or is it a virtual or software product)?
May be manufactured or hand made - s6(1)
A component part of a complex product may be a product in its own right if it is made
separately: s6(2)
What are some of the main ‘visual features’ of the design?
‘Visual feature’ - shape, configuration, pattern and ornamentation 纹饰 of the ‘product’ (2D and
3D) - s7(1)
Colour can be a feature as argued in the obiter: Smith Kline and French Laboratories Ltd’s Design
Application
Is the design registered or registrable?
1. The standard to be applied - ‘familiar person’?
s19(4) – 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 familiar
person) = familiar rather than a design expert or an actual user – objective test
Not likely to change the assessment dramatically because an informed user is a familiar person
– will broaden the scope of assessment somewhat (inclusive not exclusive of the former
standard) – previous case law still very much useful
The standard applied need to be assessed in each specific case
, Ø Re Colgate-Palmolive Company Inc – toothbrush design case: ‘the relevant person is not a
toothbrush designer nor is it a person who is unaware (not have an interest) of what is
available in toothbrush design, but would probably include both professionals and
consumers who had (in either case) made it their business to be particularly aware of
options available by way of the layout of toothbrush bristles’
Ø Re Bitzer Kuehlmaschinenbau GMBH: A specialised product might require a specialised
person - a refrigeration compressor not typically found on the shelf of a retail store but
integrated into other machines – the informed users were specialists familiar with the
product such as engineers and designers of large machines and people involved in their
repair:
Ø Review 2 v Redberry: Dresses – standard is not all women who wear dresses – must be
familiar with dress design
‘New’ and ‘Distinctive’?
Must be new and distinctive when compared with the prior art base - s15(1)
- ‘Prior art base’: designs publicly used in Australia, published in documents within or outside
Australia, disclosed in design application - s15(2)
s16(1) – is ‘new’ unless ‘identical’ to a design that forms part of the prior art base
s16(2) – is ‘distinctive’ unless it is ‘substantially similar in overall impression’ to a design that
forms part of the prior art base
Requires something more than subtle distinguishing features: ‘special’, ‘noticeable’, ‘captures
and appeals to the eye’, ‘bold’ or ‘different’
s16(3) – newness or distinctiveness not affected by the mere publication or public use of the
design in Australia on or after the priority date or by the registration of another design with the
same or a later priority date
Can be adapted from something not itself novel: Saunders v Wiel: a design for a spoon handle
made to represent Westminster Abbey = valid, novel
s17, reg 2.01 - certain things to be disregarded when assessing newness and distinctiveness …
e.g., publication or use of design with consent of the owner
s19 – certain factors must be taken into account (same factors in infringement – s71(3)):
More weight to be given to similarities between the designs than to differences between them –
bias towards protection of existing designs – s19(1)
Have regard to state of development of the prior art base for the design in the given product
area – s19(2)(a)
Have regard to visual features identified in the “statement of newness and distinctiveness” (if
there is one) – s19(2)(b)
If only part of the design is substantially similar, have regard to the amount, quality and
importance of that part in the context of design as a whole – s19(2)(c)
Have regard to the freedom of the creator to innovate within that product area – s19(2)(d)
Is there a design within the meaning of the Designs Act 2003?
s5: design = overall appearance of a product resulting from one or more visual features of pattern
or ornamentation (2D) or shape or configuration (3D)
Is there a ‘product’ to which the design is applied?
‘Possible design’
‘Displayed on’ the product – NO - designs for screen displays on computers, phones and other
such devices, intangible will not be eligible, the images are not products themselves but are
displayed ON a product.
‘Embodied in’ the product – YES - it is a design
Is the ‘possible design’ either due to, or determined by, or inseparable from, the function of the product? Does
the design serve a functional purpose? (… if so then probably not a registrable design)
s7(2) *no protection for ‘functional aspect’– competitor may copy the functional aspects (alone)
of a registered design without infringement – may copy a ‘visual feature’ if it is inseparable from
a functional purpose
Definition of ‘design’ s8 – ‘design is used in relation to a product’
Ø Re Wolanski’s Registered Design - design and product inseparable, a ‘neck-tie support’ could not
be registered because the shape defined the article
Ø Kestos Ltd v Kempat Ltd - a brassiere could not be registered – same reaso
‘Product’ (or is it a virtual or software product)?
May be manufactured or hand made - s6(1)
A component part of a complex product may be a product in its own right if it is made
separately: s6(2)
What are some of the main ‘visual features’ of the design?
‘Visual feature’ - shape, configuration, pattern and ornamentation 纹饰 of the ‘product’ (2D and
3D) - s7(1)
Colour can be a feature as argued in the obiter: Smith Kline and French Laboratories Ltd’s Design
Application
Is the design registered or registrable?
1. The standard to be applied - ‘familiar person’?
s19(4) – 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 familiar
person) = familiar rather than a design expert or an actual user – objective test
Not likely to change the assessment dramatically because an informed user is a familiar person
– will broaden the scope of assessment somewhat (inclusive not exclusive of the former
standard) – previous case law still very much useful
The standard applied need to be assessed in each specific case
, Ø Re Colgate-Palmolive Company Inc – toothbrush design case: ‘the relevant person is not a
toothbrush designer nor is it a person who is unaware (not have an interest) of what is
available in toothbrush design, but would probably include both professionals and
consumers who had (in either case) made it their business to be particularly aware of
options available by way of the layout of toothbrush bristles’
Ø Re Bitzer Kuehlmaschinenbau GMBH: A specialised product might require a specialised
person - a refrigeration compressor not typically found on the shelf of a retail store but
integrated into other machines – the informed users were specialists familiar with the
product such as engineers and designers of large machines and people involved in their
repair:
Ø Review 2 v Redberry: Dresses – standard is not all women who wear dresses – must be
familiar with dress design
‘New’ and ‘Distinctive’?
Must be new and distinctive when compared with the prior art base - s15(1)
- ‘Prior art base’: designs publicly used in Australia, published in documents within or outside
Australia, disclosed in design application - s15(2)
s16(1) – is ‘new’ unless ‘identical’ to a design that forms part of the prior art base
s16(2) – is ‘distinctive’ unless it is ‘substantially similar in overall impression’ to a design that
forms part of the prior art base
Requires something more than subtle distinguishing features: ‘special’, ‘noticeable’, ‘captures
and appeals to the eye’, ‘bold’ or ‘different’
s16(3) – newness or distinctiveness not affected by the mere publication or public use of the
design in Australia on or after the priority date or by the registration of another design with the
same or a later priority date
Can be adapted from something not itself novel: Saunders v Wiel: a design for a spoon handle
made to represent Westminster Abbey = valid, novel
s17, reg 2.01 - certain things to be disregarded when assessing newness and distinctiveness …
e.g., publication or use of design with consent of the owner
s19 – certain factors must be taken into account (same factors in infringement – s71(3)):
More weight to be given to similarities between the designs than to differences between them –
bias towards protection of existing designs – s19(1)
Have regard to state of development of the prior art base for the design in the given product
area – s19(2)(a)
Have regard to visual features identified in the “statement of newness and distinctiveness” (if
there is one) – s19(2)(b)
If only part of the design is substantially similar, have regard to the amount, quality and
importance of that part in the context of design as a whole – s19(2)(c)
Have regard to the freedom of the creator to innovate within that product area – s19(2)(d)
