D04.1 Introduction

Date Published

The Designs Act provides protection of a design in relation to a product [s.8]. A design, in relation to a product, means ‘the overall appearance of the product resulting from one or more visual features of the product’ [s.5 – definition of design.]

The Act provides for a clear distinction between the subject matter of a design, and the newness/distinctiveness of a design. In particular:

  • sections 6 to 8 (plus the definition of design in s.5) set out the subject matter requirements of a design in terms of product, overall appearance, and visual features; and
  • sections 16 to 19 set out the criteria of newness and distinctiveness (including statements of newness and distinctiveness, and overall impression) for assessing the registrability of a design.

Before one can apply the criteria of newness and distinctiveness to a design, it is first necessary to identify the design through the concepts of ‘product’, ‘visual features’, ‘overall appearance’, and the interpretation of the representations. As stated in para 52 of Review No 2 v Redberry Enterprises [2008] FCA 1588:

‘everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration.’ {emphasis added}.

That disclaiming can arise in many ways (such as the way the representations are drawn, or from  the statement of newness and distinctiveness), requiring interpretation of the representations and other material present in the Register entry. For example, the register entry for that design (307708, ‘Ladies garments’) was a colour photograph of a garment on a store mannequin – but there was no suggestion that the mannequin formed part of the design. This part of the manual is directed to identifying the design that is the subject of the registration.

These terms ‘product’, ‘visual features’ and ‘overall appearance’ have some conceptual commonality with different terms used in the Designs Act 1906 – which means that some precedent under the 1906 Act may be relevant under the 2003 Act.

D04.1.1  Plural designs

The number of designs present in a design application is a matter intended to be dealt with at the formalities stage. To that end, the applicant is required (via the approved form) to indicate the number of designs in the application, and pay the corresponding filing fee. And the Registrar’s assessment of the number of designs is part of the formality check. Consequently examination will proceed on the basis that the design registration is in respect of a single design only.

At examination the examiner may reach the conclusion that the registered design might be for more than one design. The following are possible scenarios

  • No issue was raised in formalities, but the representations are clearly in respect of two separate designs. It is appropriate to treat them as different designs and assess them separately against the requirements of newness and distinctiveness. There is no objection to the fact of there being plural designs. However examination cannot be completed until all designs satisfy the newness and distinctiveness requirements (which might be achieved by deleting by way of amendment.)
  • The issue was raised in formalities, with the owner arguing there was a single design. During examination the owner seeks to argue there are plural designs. The examiner should proceed on the basis of there being only one design, with the visual features of the design being those that are in common to (or consistent with) the various representations.  [Note that such arguments may establish a ground of invalidity under s.93(3)(d)] All instances of this situation should be referred directly to the Deputy Registrar.

D04.1.2  Effect of other Designs on interpretation

It is not unusual for an owner to file multiple applications for similar designs on the same day. Also an owner might subsequently file a design that might best be described as an improvement over an earlier design they have filed.

A design must be construed and assessed on the basis of that design alone. In particular:

  • no regard may be had to the content of other designs filed by the owner on that day; and
  • no regard may be had to the content of any designs filed by the owner at a later date.

See, for example, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 21 ALR 1, and Pfizer Inc v Commissioner of Patents [2005] FCA 137)]

However, when considering the allowability of amendments under s.28 or s.66(6), regard must be had to the disclosures in any document included in the design application when filed. If that application disclosed multiple designs, all such designs are included for this purpose. See s.28(3) and s.66(6)(b).

When an application is filed containing plural designs, the practice of the Designs Office is to place the designs and associated correspondence in different files. In such circumstances the relevant disclosures may be held on a different file.

D04.1.3  Effect of statements made during prosecution

During prosecution of a design, an owner might make various assertions or concessions about the scope or interpretation of the designs. In some jurisdictions such assertions or concessions have a binding effect on the owner by way of a principle referred to as file wrapper estoppel. In the context of patents, the Federal Court has concluded that the doctrine of file wrapper estoppel does not apply in Australia. [see Re Prestige Group (Australia) Pty Ltd v Dart Industries Inc [1990] FCA 281; 19 IPR 275]. It may be assumed that this conclusion applies equally to Designs.