- Part 1 - Formalities
- 1. Classification
- 2. Entitlement
- 3. Applicant Name
- 4. Applicant Address
- 5. Address for Service
- 6. (reserved)
- 7. Product Name
- 8. Section 43
- 9. Statement of Newness and Distinctiveness
- 10. Convention Details
- 11. Excluded Design Details
- 12. Registration / Publication Request
- 13. Designer Name
- 14. Representations
- 15. Further Designs
- 16. Amendments
- 17. Formalities Checking Procedure
- Part 2 - Examination
- D01 Citation Index
- D02 (reserved)
- D03 Examination Process
- D03.1 Overview
- D03.2 Requesting examination - requirements
- D03.3 Who may request examination?
- D03.4 Which Designs may be examined?
- D03.5 Court proceedings
- D03.6 Handling concurrent requests for examination
- D03.7 Handling requests for examination when a Certificate of Examination has previously issued
- D03.8 Further reports
- D03.9 Being 'satisfied'
- D03.10 Period for completion of examination
- D03.11 Withdrawal of request for examination
- D03.12 Interface with Court Proceedings
- D03.13 Intention to Certify
- D03.14 Material provided by a 3rd party
- D03.15 3rd Party Initiated Examinations
- D03.16 Revocation during Examination
- D03.17 Expedited Examination
- D04 Identifying the Design
- D04.1 Introduction
- D04.2 Design in relation to a product
- D04.3 What is a product?
- D04.4 Overall appearance, and visual features
- D04.5 Interpretation of representations
- D04.6 Role of a Statement of Newness and Distinctiveness
- D05 Designs which must not be registered
- D05 Designs which must not be registered - s.43, Reg 4.06
- D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b)
- D05.2 Integrated circuits [s.43(1)(c)]
- D05.3 Medals [reg 4.06(a)]
- D05.4 Protection of Word 'Anzac' Regulations
- D05.5 Paper money, securities [reg 4.05(c)]
- D05.6 Scandalous designs
- D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)]
- D06 Priority Dates
- D06.1 Background, general issues
- D06.2 Priority date - Convention Applications
- D06.3 Priority date - Excluded Designs
- D06.4 Priority date - Applications by an entitled person (s.52, 53 or 54)
- D06.5 Priority date - Converted Applications
- D07 Prior Art Base
- D07.1 General Information/Background
- D07.2 Publicly used in Australia
- D07.3 Published in a document within or outside Australia
- D07.4 Designs disclosed in applications
- D07.5 Exhibitions, Unauthorised disclosures
- D07.6 Copyright overlap - s.19
- Appendix - Examiner's Worksheet
- D08 Searching
- D09 Assessing Newness and Distinctiveness
- D10 Amendments
- D10.1 Overview
- D10.2 Ambit of s 28 amendments
- D10.3 Ambit of s.66 amendments
- D10.4 Allowabililty - inclusion of matter not in substance disclosed
- D10.5 Allowability - increasing scope of the Design Registration
- D10.6 Amendments of Statement of Newness and Distinctiveness
- D11 Extension of Time - s.137
- D11.1 Introduction
- D11.2 s.137(1) - Error or Omission by the Registrar
- D11.3 s.137(2) - Summary of the Principles of Law
- D11.4 Making the Application - s.137(2)
- D11.5 Registrar's Discretion - s.137(2)
- D11.6 Advertisement of Extension - Subsection 137(4)
- D11.7 Period of Extension to be Granted
- D11.8 Common Deficiencies
- D11.9 Protection and Compensation Arrangements
- D12 Assignment etc of Designs, the Registrar
- D12.1 Introduction
- D12.2 Registering Assignments
- D12.3 Registering other interests
- D12.4 Correction of the Register - Regulation 9.05
- D12.5 Rectification of the Register by a court
- D12.6 Trusts, Bankruptcy, Insolvency
- D13 Ownership Disputes
- D13.1 Overview of ownership disputes
- D13.2 S.29 disputes
- D13.3 S.30 Disputes associated with recording assignments
- D13.4 S.52 Revocation relating to Entitled Persons
- D13.5 Application by Entitled persons after revocation
- D14 Publication, File access
- D14.1 Background, general issues
- D14.2 Documents not publicly available
- D14.3 Interaction with the Freedom of Information Act 1982
- D14.4 Production of documents under s.61(2)
- D14.5 Right of Lien
- D15 Surrender of a Design
- D15.1 Overview
- D15.2 Processing an offer to surrender
- D15.3 Discretionary considerations in Accepting the Offer
- D15.4 Surrender by consent - and ownership matters
- D16 Prohibition Orders
- Part 3 - Classification
- Amendments to the Eleventh Edition of the Locarno Classification
- Amendments to the Tenth Edition of the Locarno Classification
- Class Heading Summary
- Class 01 - Foodstuffs
- Class 02 - Articles of clothing and haberdashery
- Class 03 - Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 - Brushware
- Class 05 - Textile piecegoods, artificial and natural sheet material
- Class 06 - Furnishings
- Class 07 - Household goods not elsewhere specified
- Class 08 - Tools and hardware
- Class 09 - Packages and containers for the transport or handling of goods
- Class 10 - Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 - Articles of adornment
- Class 12 - Means of transport or hoisting
- Class 13 - Equipment for production, distribution or transformation of electricity
- Class 14 - Recording, communication or information retrieval equipment
- Class 15 - Machines not elsewhere specified
- Class 16 - Photographic, cameras, cinematographic and optical apparatus
- Class 17 - Musical instruments
- Class 18 - Printing and office machinery
- Class 19 - Stationery and office equipment, artists and teaching materials
- Class 20 - Sales and advertising equipment, signs
- Class 21 - Games, toys, tents and sports goods
- Class 22 - Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 - Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
- Class 24 - Medical and laboratory equipment
- Class 25 - Building units and construction elements
- Class 26 - Lighting apparatus
- Class 27 - Tobacco and smokers supplies
- Class 28 - Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 - Devices and equipment against fire hazards, for accident prevention and for rescues
- Class 30 - Articles for the care and handling of animals
- Class 31 - Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 - Graphic symbols and logos, surface patterns, ornamentation
D04.3 What is a product?
Section 6 defines a product as:
a. Any thing that is manufactured or hand made.
b. A component part of a complex product if made separately
c. A thing that is of one or more indefinite dimensions, so long as one or more of the following applies:
a. a cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern;
b. all the dimensions remain in proportion;
c. the cross-sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios;
d. it has a pattern or ornamentation that repeats itself.
d. A kit which, when assembled, is a particular product is taken to be that product
This definition is exhaustive. Consequently if a purported design is in respect of something which does not fall within this definition of ‘product’, there is no subject matter for the registration of a design.
Microsoft Corporation  ADO 2 involved an application for a design in respect of a font. Registration was refused on the basis that ‘the present design does not disclose a product bearing visual features. It only discloses visual features.’
It is important to recognise that the definition of a product is limited to the concept of being a ‘thing’. In particular, selling an identical ‘thing’ (product) for a different purpose or use does not thereby make it a different ‘thing’ (product). The ‘thing’ is still the same thing. The following propositions apply:
- A thing does not become a different product merely by giving it a different name.
For example, consider a manufacturing plant producing an object – with every second object being packaged with a different label, description, or statement of use. That packaging or labelling does not convert the identical objects into different products when considered as a thing.
For example, consider two pharmaceutical tablets having the same appearance. One tablet contains aspirin. The other tablet contains codeine. In the context of Designs, the tablets are the same ‘thing’; the chemical composition has no direct or indirect effect on the appearance of the product. Calling one product a ‘codeine tablet’ and the other product an ‘aspirin tablet’ does not create different ‘things’ in the context of the Designs Act.
It might be that differences in the composition of the thing will give rise to a different visual appearance (which potentially forms the basis for distinctiveness). For example, a different chemical composition might give rise to a different colour of the thing. But colour is a difference in a visual feature of the product, not in the nature of the product.
- A thing is not a different product merely as a result of it being a different size (with the dimensions being in the same proportion).
For example, a medium sized shirt and an XXL sized shirt are not different products as a result of their difference in size. However, a similar shirt but of a size appropriate for a small doll could be considered a different product.
Consequently, while an understanding of the express or implied use of a product is required to classify the design in the Locarno classification, care must be taken to properly understand the nature of the product – particularly in the context of determining search strategy, and also in applying the tests of newness and distinctiveness.
Design protection is not in respect of function or purpose (although a design may be based on features that result from the function or purpose). See D04.4.4. Note that the use of a known thing for a new function or purpose is proper subject matter for the grant of a patent.
D04.3.1 The owner’s identification of the product
The starting point for the identification of the ‘product’ is the owner’s identification of the product when they file the application. The approved form requires the applicant to specify the product(s), and it is this identification that is included in the Register.
Note: The design right is expressly limited to products in relation to which the design is registered [s.10(1)(a)]. For that purpose the product the applicant specifies in their application is entered on the Register [s.111(2)(a)] at registration. It is the responsibility of the owner to correctly specify the product. The only consideration of the product identification given before registration is whether the product has been identified sufficiently to allow classification in accordance with the Locarno classification [Reg. 4.04(1)(c), 4.05(1)(c)]. In examination proceedings, if that product identification is in some manner deficient, any amendment thereof must comply with s.66(6).
However when considering issues of newness and distinctiveness, or of infringement, it is necessary to correctly understand the nature of the product as a ‘thing’. To this end, it is important to recognise that the Locarno classification classifies designs on the basis of function (express or implied) rather than appearance or structure – with the result that a product (thing) will usually have a classification dependant upon the owner’s identification of purpose.
Example: Plastic milk crates can be used for crating milk cartons. However they are also known to be used as a stool, a step ladder, a book case, a container, a motor-cycle carrier rack etc. The Locarno classification given to a ‘thing’ that is otherwise a milk crate may depend upon the identified use of the thing. But the identical thing is not different merely because it has a different identified purpose.
Consequently, when an Examiner is conducting a search they need to consider where they might find the product (as a thing) bearing the design – recognising the possibility that the same thing with the same or a similar design might be classified on the basis of a different asserted purpose.
While the product is expressly an entry in the Register [S.111(2)(a)], it is still necessary to interpret the ambit of the product as so identified. This will usually entail a consideration of the product identification, the representations, and the understanding of an informed user. It should be noted that the only criterion for rejecting a product identification is if the product is insufficiently identified for Locarno classification – and this can only arise in the formality check under reg.4.04(1)(c) or 4.05(1)(c).]
Example: A design might be sought in respect of a “tyre tread”. Ignoring re-treads and the like, a tyre tread is not a product in its own right, nor part of a complex product; it is a pattern applied to a certain part of a tyre. Tyre treads are classified as such in Locarno [Loc (11) Cl.12-15], and so no objection to the product name being “tyre tread” can arise at formalities. At examination the only issue is the correct understanding of the product for the purpose of conducting a search for newness and distinctiveness. In particular, there is no statutory objection to the ‘correctness’ of the product identification available to the Examiner. [see s.65(2) and 15(1) in particular, noting also R5.02 & s.43.] However the informed user would clearly understand that the product was a tyre, and the tread was the design applied to the tyre, and examination would proceed on that basis.
For most designs the nature of the product (thing) is self-evident from the owner’s identification and the representations. However some issues that can arise are:
- Where there is conflict between the product identification given on the application form, and the representations, the product will be identified on the basis of the representations – with an assumption that the textual product identification is in error.
Note – where the difference between the product description and the representations is readily apparent, the issue will often be dealt with at the formality check as a result of the consequential uncertainty in the Locarno classification. However if there is no uncertainty in the Locarno classification, or the difference is not readily apparent, the issue may not surface until examination.
- Where the product identification given on the application form is apparently different to that shown in the representations – but the representations can be interpreted consistently with the product identification – the product will be identified on the basis of the representations as interpreted by reference to the product identification.
- The identification of the product will typically be based on a range of implied characteristics. For example:
- a ‘writing instrument’ is essentially something that can be handheld and put visible marks on a surface;
- a ‘pen’ is constructed to hold ink and release it while writing;
- a ‘pencil’ holds one or more lengths of a solid material for writing
in which case it may be observed that:
- both a pen and a pencil are writing instruments. That is, when considering a design in respect of a ‘writing instrument’, earlier designs in respect of each of the three products are all in respect of the same product – a writing instrument.
- a pen is not a pencil, and vice-versa. And a writing instrument is not necessarily a pen or pencil. Consequently when considering a design in respect of (for example) a ‘pen’, earlier designs in respect of pencils and ‘writing instruments’ are in respect of ‘similar’ products, not the same product. [Assuming the representations in the ‘writing instruments’ do not expressly indicate a pen as a possibility.]
Sometimes the product identification includes an indication of intended use [or even a separate statement of use]. Generally such statements mean no more than the product must be capable of performing that intended use. For example, ‘A container for molten steel’ implies a certain ruggedness of construction that would not be expected in goods made from plastic – such as a lunch box. In contrast, the qualifications of container in ‘A container for water’ and ‘A container for milk’ are unlikely to import any constructional or visual feature differences between the two containers.
When assessing the newness of a design: a thing used for one purpose is not distinguished from the same thing when used for a different purpose. It is the identical thing. Accordingly a statement of intended use is relevant to newness only to the extent that it implies the presence of specific features in the thing. [See also 9.2]
When assessing whether a design is distinctive: the statement of intended use is relevant to identifying the informed user, as well as the ‘related products’ that can be considered under s.19(3). An informed user would generally be a person having direct knowledge of the product and its intended use. The significant question is – what other uses would the informed user consider to be relevant to the product. For example, would an informed user in respect of a ‘milk container’ consider a ‘water container’ to be a similar product to a milk container – such that the water container would be relevant as a citation having regard to s.19(3)? [See also 18.104.22.168]
- Uncertainty about the nature of the product arises if an indication of function or purpose is by way of trade names or Trade Marks. Trade names or Trade Marks are an indication of source or origin, not structure or appearance (with the exception of shape marks). They do not provide any unique characterisation of the product or its appearance, which may change in time or geographic location. Similarly phrases like ‘to suit’ are non-specific as to the nature of suitability – whether the suitability is based on one or more of mechanical, chemical, electrical, or optical properties (to name just a few…). In examination, it is appropriate in the first instance to proceed on the basis that such indications or phrases provide no limitation on the nature of the product different to what is evident in the representations (as understood by an informed user).
It must be remembered that the trade mark owner does not have exclusive rights to the trade mark other than those created by the Trade Marks Act 1995 - including indicating the source or origin of the goods. For example, a towel bearing the ‘marks’ of many well-known brands in some form of pattern might not constitute an infringement of any of the marks – depending on the presentation. In any event, the issue of whether such a product would infringe a trade mark, or any copyright associated with the trade mark, is not an issue that is directly relevant to the validity of a design.
Some common Trade Marks that might be inadvertently used to identify a product are:
|AERTEX (clothing)||APPLE (computers/computer equipment)||BAKELITE (insulation dressing)|
|BAND-AID (adhesive dressing/materials)||BIRO (ball point pen)||BLUETOOTH (telecommunication /computer communication equipment)|
|BOBCAT (earth moving vehicles/equipment)||BOOGIE (body board)||BOWSER (metering pump)|
|BREATHALYSER (chemical preparation for absorbing and oxidising alcohol/alcohol breath tester)||BULLETIN (newspaper/publication)||CATERPILLAR (Machinery)|
|CELLOPHANE (cellulose sheet)||COCA-COLA (COKE) (aerated beverage)||COMPACTUS (devices for storing)|
|CYCLONE (scaffolding materials)||DACRON||DICTAPHONE (instrument for recording and reproducing dictation)|
|DOONA (quilted eiderdowns or padded quilts)||DUCO (enamel paint)||ELASTOPLAST (elasticised dressing)|
|ELECTRIC EEL (sewer/drain cleaning apparatus or equipment)||E-MAIL (computer/electronic mail)||ESKY ((portable) cooling apparatus/ice boxes)|
|FORMICA (laminated building material)||FRISBEE (toy flying saucer)||GYPROCK (building material)|
|HEAT BEADS (solid fuel)||HOOVER (vacuum cleaner)||iPOD (Portable audio and data storage equipment)|
|JEEP (small military-style vehicle)||KLEENEX (facial tissues)||LAUNDRETTE (washing machine)|
|LI-LO (inflatable mattress)||LYCRA (synthetic fibres and filaments)||MACINTOSH (computer equipment and software)|
|MASONITE (fibre board)||MEMORY STICK (Portable data storage device)||NINTENDO (electronic game)|
|PERSPEX (heat resistant glass/plastic)||PLAY DOH (modelling compound/clay)||POLAROID (photographic equipment)|
|POLYBAG (infusion bag)||PRIMUS (portable cooking apparatus)||PYREX (Glassware)|
|ROLLERBLADE (in-line skates)||SELLOTAPE (adhesive tape)||SPAM (canned spiced ham)|
|SPLAYD (combined knife/fork eating instrument)||STACKHAT (safety helmet)||STYROFOAM (multicellular expanded synthetic resinous material)|
|TEFLON (generally refers to a non-stick lining for cookware)||THERMOS (insulated flask)||UGH (boots)|
|WALKMAN (portable audio equipment)||WINDCHEATER (close-fitting garment for wind protection)||WHIPPER SNIPPER (lawn-grass trimmer or edger)|
|XEROX (Electrophotographic copying machine)|
D04.3.2 “Any thing that is manufactured or hand made”
The use of the word ‘thing’ in the definition of product restricts the subject matter to tangible objects having material form. This is supported by the context of the term appearing within the sentence “a thing that is manufactured or hand made” – the concepts of manufactured or hand made both carry a strong connotation of physical process. This interpretation is also supported by several earlier decisions of the courts and this office. In particular, ‘a thing’ does not include ethereal or invisible objects (such as electrical signals). Some examples are:
- while the base of a fountain, and a water spout therein designed to generate a fountain of a particular shape, are appropriate tangible objects for design protection, the water jet emanating from that fountain is inherently ethereal in nature and is not a manufactured or hand-made ‘thing’
- A laser might be controlled to produce a 3-D spatial image of an object; that image is not a ‘thing’. However if the laser is used to ’burn’ that image into a block of Perspex™, a relevant ‘thing’ has been created
- A type font is the shape of characters. A type font does not exist as a thing in its own right. That is, a font cannot be a product; at most it is the design applied to a product. In some situations the product is strongly associated with the characters formed according to the font – such as house numbers. In other situations the product is only weakly associated with the font applied to characters– such as the paper and the text imprinted on it from a computer printer, or lettering on children’s building blocks – such that the criterion of distinctiveness may not be met.
The terms “manufactured” and “hand made” reflect the industrial nature of design protection. Things that occur naturally are not capable of registration. For example, while a carved potato is a ‘thing that is manufactured or hand made’, an unaltered potato is not.
Applicants or owners might respond to an objection based on the above by asserting that the Registrar is taking an unnecessarily narrow view of the scope of protection available under the Designs Act, and should apply a more liberal approach to be consistent with the practice of one or other foreign Designs offices. It needs to be remembered that Designs are granted in Australia under the provision of the Australian Designs Act – and not the legislative regime of a foreign country.
Note: Regulation 11 of the Designs Act 1906 excluded a range of articles that were primarily of a literary or artistic character. This exclusion does not exist in the 2003 Act [refer ALRC recommendation 19]. Accordingly decisions like Re Application by TDK Electroniks Co Ltd (1983) 1 IPR 529, and Re Littlewoods Pools Ltd's Application (1949) 66 RPC 309 have no application under the 2003 Act.
D04.3.3 Products and human beings
A human being is not something that is manufactured or hand-made. Consequently, while design protection is available for a hair style as applied to a wig, design protection is not available for that hair style as applied to a person’s actual hair – as the relevant ‘product’ to which the design is applied is the human being. This issue can arise in a number of situations, such as:
- Ornamentation on an artificial fingernail involves a product, whereas ornamentation on an actual fingernail is ornamentation of a human being;
- Transfers or designs for applying ornamentation to a body (such as decals, transfers, and patterns for body painting, tattoos, branding or scarification) involve ornamentation of the carrier; however the ornamentation as applied to the human body is ornamentation of a human being.
This issue will normally be identified in the formality check under r.4.04(1)(c) or 4.05(1)(c) – on the basis that if the application does not identify a product within the meaning of the Act, there is no product for classification into Locarno.
Where this situation is identified in examination, the ground for revocation is that the design is not a registrable design because there is no product within the meaning of the Act bearing the design – and consequently the design is inherently incapable of being new or distinctive.
D04.3.4 A component part of a complex product if made separately
The component part of a complex product is a product in its own right if it is made separately. Section 5 of the Act gives the definition of a complex product as:
complex product means a product comprising at least 2 replaceable component parts permitting disassembly and re-assembly of the product.
A design in respect of a complex product does not give protection in respect of the component parts per se. Protection only arises when separate design registration is obtained.
In assessing whether a product is a unitary product, or a complex product, regard should be had to the structure of the product. The mere fact that a product is made of numerous components does not make it a complex product. A product is a complex product only to the extent that it permits disassembly and reassembly. For example, a product where components are held together by way of screws is inherently a complex product – as the component parts can be disassembled and reassembled. In contrast, a tyre tread is an inherent part of a tyre that is not capable of disassembly – even in the context of tyre retreads.
Products held together with interlocking resilient members are similarly complex products if the resilient member is designed for disengagement/re-engagement. [Compare the type of locking mechanism on the plastic housing of (for example) a camera which is designed to be removed for camera repairs, with the type of locking mechanism on a cable tie – which is not designed to be undone.]
Where the components are held together in a manner that prevents physical separation – such as by being welded, riveted or glued – prima facie the product does not contain parts that permit disassembly/re-assembly. Where an owner wants to argue that the component parts are replaceable even though they are welded, riveted or glued (for example), the owner will need to demonstrate that the product is capable of being disassembled/re-assembled – for example, by showing the commercial availability of component parts for replacement purposes, or a declaration from a repairer or other relevantly qualified person.
The mere fact that something is ‘replaceable’ does not make the product a complex product. For example, merely gluing a ‘replacement’ sole onto the worn sole of a shoe does not involve disassembly/reassembly of the shoe. In contrast, if a discrete layer of the sole of the shoe is removed and replaced with a new sole, there has been disassembly/reassembly.
It may be noted that the concept of a complex product is a question of fact, not intent. That is, if one manufacturer makes a product as a single unitary product – prima facie that product is not a complex product. However, if another manufacturer devises a way of replacing a component part of that product via some form of disassembly/re-assembly, that product (as a matter of fact) is a complex product.
For a complex product, design protection is separately available for the component parts as well as the assembled whole. This can raise difficulties if the representations indicate different components of a product – is the design application in respect of one design (the assembled product) or plural designs (the assembled product and/or individual components)? This would typically be resolved at the formality check stage, in the context of establishing the number of designs being applied for in the application (and the corresponding filing fee). Typically, if the application is for a single design, consisting of different components applied to a single product, the representations should show how the components are formed together, displaying what the assembled product looks like and how the components interact with each other. Once the design has been registered, the effect of s.66(6) is that:
- If the design has been registered in respect of the whole complex product, it cannot be amended to be in respect of a particular component of that complex product;
- If the design has been registered in respect of an element of the complex product, it may be amended to be in respect of the complex product per se [but only to the extent the relevant features were disclosed in the original representations].
Where the design is in respect of an element of a complex product:
- the product is that element per se. Where the product identification makes reference to the complex product, the issues of indications of intended use as discussed in 4.3.1 above are relevant.
- Issues of newness and distinctiveness are assessed on the basis of the product (element) in isolation from the complex product. That is, the newness or distinctiveness of the complex product as a whole is irrelevant to the newness or distinctiveness of any of its component parts.
Example: For a complex product held together with screws, the screws themselves would constitute a component part of a complex product. However those screws might be very ordinary screws, and as screws they do not acquire newness or distinctiveness merely by being a component part of a complex product that is new and distinctive.
It should be noted that manufacturers may make a product using components supplied by other manufacturers. Assuming the contractual arrangements allow the other manufacturer to manufacture and sell those components to other persons, those components are products in their own right – irrespective of whether the product in which they are assembled can be disassembled.
In the examination context, the issue of whether the product is an entire product, or a component part of a complex product, only has relevance when assessing newness and distinctiveness. Where there is a citation whose relevance depends on that interpretation and it is not clear which is correct, the Examiner will (in the first instance) object on the basis of the interpretation that gives rise to the ground for revocation. [See D03.9]
D04.3.5 Indefinite dimensions
In the early ‘90’s there were two Federal Court decisions that found that a design depicting an object of uniform cross-section but indefinite length was not registrable – Bondor v National Panels 23 IPR 289, and Brisbane Aluminium v Techni Interiors 23 IPR 107. The basic concept was that overall shape was the basis of design protection, and that an item having an indefinite dimension did not have a particular shape. S.18(3) of the 1906 Act was inserted expressly to overcome those decisions. In its review, the ALRC recommended further elaboration of the criteria for things involving indefinite dimensions [Recommendation 15], and these have been implemented in s.6(3).
It is important to appreciate that the practical effect of the ‘indefinite dimensions’ provision is to create a departure from the normal rule of comparing the appearance of the product as a whole; if the product meets the criteria of s.6(3) the appearance along the indefinite dimension may be partly or wholly irrelevant to the newness or distinctiveness of the design (or to whether a particular product is an infringement.)
Example: where a design is simply in respect of the cross-section of an extrusion, the design would not be new having regard to any of the following extrusions having the same cross-section:
* an extrusion with holes or patterns formed along its length;
* an extrusion where the cross-sectional shape remains the same, but the size varies along the length of the extrusion;
* an extrusion having the same cross-section which forms an arc along its length. [That is, the indefinite dimension need not necessarily be a linear dimension.]
The provisions of s.6(3) have been drafted to cover a range of situations where indefinite length is involved. In particular, things where:
- the indefinite dimension applies to the entire length of the product – such as simple extrusion;
- the indefinite dimension applies to only part of the article – such as the body-section of a bottle, or the panel section of a door; and
- the indefinite dimension applies to part of an article in two dimensions – such as the width and height of a window frame.
For a thing involving indefinite dimensions to be treated as a product under the Act, one or more of the following criteria must be satisfied:
a. a cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern.
- simple extrusions having no variation in cross-section shape or dimension;
- extrusions that have a variation in the cross-sectional shape or dimension, as long as there is a repeating pattern along the indefinite dimension. (Example – a metal beam with a repeating pattern of holes along its length.) Note that newness and distinctiveness can properly reside in the repeating pattern along the length rather than the shape of the cross-section.
- things where part of the thing along that dimension is indefinite – such as a bottle with a mid-section of indeterminate length. In this situation the requirement regarding variation according to a regular pattern applies to the section that is indicated to be of indeterminate length.
Note that a product that is indefinite in two or more dimensions will not meet this criterion if the cross-section in one dimension intersects with the cross-section in another direction – as in this situation the cross-section in at least one of those dimensions is not fixed.
b. all the [indefinite] dimensions remain in proportion;
This provision applies to products where the indefiniteness occurs in two dimensions.
The reference to ‘all’ dimensions requires plural dimensions, and excludes a single indefinite dimension. Indefiniteness in 3-dimensions, together with the requirement for the dimensions to remain in proportion, is no more than the general proposition that size is not a distinguishing factor.
- a tube where the cross-sectional width and height varied randomly along its length – but the width and height remained in constant proportion.
- a window frame with both the width and height being indicated as indeterminate.
c. the cross-sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios;
An example would be a tube where the cross-sectional shape remained the same, but the width and height of the tube varied along its length.
This differs from (a) in that there is no requirement for a repetitive pattern along the length. In particular, (c) does not apply to extrusions where there are holes or the like along the length of the extrusion.
It may be remarked that in this situation a lack of repetitiveness along the indefinite length means that there is no relevant pattern or ornamentation in that dimension. Consequently the newness and distinctiveness must reside in the cross-sectional shape per se.
d. it has a pattern or ornamentation that repeats itself.
This is intended to apply to textiles and other sheet material whose surface decoration repeats. The representations must show at least one pattern repeat for this to apply.
The provisions for ‘indefinite dimensions’ exist solely to ensure validity of designs involving an indefinite dimension – contrary to the Bondor decision. In practice, the main issues are:
- in formalities: correctly identifying how many products are present in the application;
- in examination: newness and distinctiveness inherently cannot reside in the relative size of the indefinite dimension.
It must be remembered that where the representation purports to indicate indefiniteness, but the thing does not fit within the criteria of s.6(3), the thing is still a product capable of registration. However the representation must be interpreted on the basis of the relevant dimensions not being indefinite. That is, the Examiner will need to assess what dimensions an informed user would associate with any portion indicated as being indefinite. But even in this situation, the indication of indefiniteness is a clear indication that newness or distinctiveness does not reside in the relative size of the portion indicated as indefinite.
“A kit which, when assembled, is a particular product is taken to be that product”.
There are two aspects to this provision. [See ALRC recommendations 17 and 53.]
Firstly, in situations where design protection is sought in respect of a kit of parts that may be assembled (for example, a model airplane kit – as distinct from those kits which are a mere collection of objects such as a first-aid kit), the assembled kit is taken to be the product. The representations should show how the assembled kit of items form together as a single design applied to the product. This may be achieved through the use of dotted lines and/or environmental views.
The second aspect relates to infringement. Potentially a competitor might try to avoid infringement by selling a set of components which, when assembled by the purchaser, produces a product that infringes the design. That is, the purchaser commits the act of infringement by assembling the product, not the manufacturer. Commercially, pursuing the purchaser for infringement would usually not be sensible – the design owner would want to stop the manufacturers/distributors/retailers of the components. S.6(4) has this effect; it treats a kit of components as being the final product – thereby exposing the manufacturers/distributors/retailers to infringement proceedings.
Note that the concept of a kit in s.6(4) is expressly linked to items which, when assembled, make up a product. Furthermore, s.6(4) requires the product to have been assembled from the kit – that is, the product does not comprise any other elements. Accordingly many items sold commercially as ‘kits’ are not kits within the meaning of s.6(4). For example,
- a first-aid kit – which is merely a collection of individual objects; they are not designed to be assembled to make a product;
- a ‘car body kit’ – being a collection of items for addition to a car. The items are not assembled together to form a product, but attached to another product.
For such things, design protection by way of a single design may be available if the requirements of a common design are met. See D04.3.7.
For consideration of newness and distinctiveness, it is important to remember that the registration is in respect of the appearance of the assembled kit. Consequently it is insufficient to show that all the components of the kit are individually known, or that they are known to exist as a collection that could be assembled to make the particular product. Rather it is necessary to establish that the components would be assembled to make the relevant product – either by reason of associated instructions, marketing material, or because they would inevitably be assembled to make the particular product.
D04.3.7 Common designs and multiple products
A single design application may be in respect of a common design applied to more than one product [s.22(1)(b)], and it can proceed to registration as a single registration [s.39(2)(b)]. The principle reason for proceeding with a common design is the fee advantage associated with a single application/registration. Regarding the formalities requirements for a common design please see Part 1, 14.3 regarding “representations”, Part 1, 15.3 regarding “further designs” and Part 1, 7 regarding “product names”. Regarding post registration “amendments” please refer to D010.
Inherent in registration as a common design are design features that are in common between the representations of the various products.
Design features, applied to a range of products as a common design, may include both:
- a physical similarity, including the overall shape and appearance; and
- a similarity in pattern and / or ornamentation.
Typically common designs are sought in respect of products that are related in some manner. For example, a common design applied to the handle of a knife, fork and spoon. Or a design applied to a ‘real’ car and a toy car. In both of these examples, the design exists in 3 dimensions. Where a common design is asserted in respect of a 3-dimensional product and a 2-dimensional product (for example – a car, and an image of that car on a shirt), the common design is limited to the visual features in common. 3-dimensional elements of the design on the car that are not evident on the image on the shirt cannot form part of the common design. 2- dimensional common designs primarily consist of artistic patterns and ornamentation. The goods that these designs are applied to will typically be related and limited to a manufacturer’s field of interest, for example a common pattern applied to a range of fashion items.
When an Examiner is formulating a search strategy as part of examining a common design registration, they should consider the products that the common design feature is applied to. In the example of the car and image of that car on a t-shirt, the search should consider actual cars and t-shirts. In the case of a common pattern applied to a pair of glasses, shoes and a handbag these three products should be searched as part of the search strategy.
If a citation is found as part of the prior art field, the grounds for revocation applies to all of the products that are included as part of the single common design registration. This includes where a citation is not relevant to all of the products. In such a case an amendment to delete a design or designs from a common design registration under s.66(3) could be considered on the basis that the amendment removes the product(s) which the citation is applicable to. This type of request should be considered carefully though because of the potential effect on the identification of the design. [See D010.5]
Occasionally applicants will file multiple applications for similar designs/products. Unlike common designs, each design must be interpreted on its own. It is not permissible to interpret a design by having regard to designs in a different application – even if they were filed by the same owner and on the same day. See D04.1.2.