- 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
D04.4 Overall appearance, and visual features
Design, in relation to a product, means the
'overall appearance of the product resulting from one or more visual features of the product.'
[see definition in s 5].
Section 7 of the Designs Act provides a definition of a visual feature, in three parts; the first defines what can be a visual feature, the second refers to function or purpose and the third defines what cannot be a visual feature. Most notably, the definition is an ‘inclusive’ definition – in that anything that can be properly described as a ‘visual feature’ is included unless it is excluded by reason of s 7(3). These are discussed below.
D04.4.1 Overall resulting from …
It is important to understand that the Act deals with the issues of appearance in two different ways:
- when determining the subject matter of a design, the criterion is the overall appearance of the product…..;
- when determining whether a design is distinctive, the criterion is the overall impression of the design.
This part of the manual is concerned with the issues of the overall appearance of a design – that is, the subject matter of the design. Issues relating to the impression created by the design [ss 16(2) and 19(1)] are dealt with in Part 2, D09.3 of this manual.
It is important to recognise that the design right is not in respect of the overall appearance of the product per se. Rather, it is the overall appearance that results from one or more visual features. [s 5 definition of 'design']. Sometimes the relevant visual features relate to the product as a whole – and in such circumstances, the ‘appearance of the product’ is identical to ‘the appearance of the product resulting from one or more visual features’. More commonly, a design relates to a particular visual feature (or group of features) applied to a product that has other visual features. In such circumstances, the design is NOT the overall appearance of the product per se. Rather it is the overall appearance of the product that results from the particular visual features.
The ALRC clearly intended design rights to exist in individual features present in a product, and not be limited to the overall appearance of the product resulting from a range of features. See paragraph 4.2, which states: “All aspects of a product’s visual appearance should be capable of protection. This can be captured as defining a design as one or more of the visual features of a product.” (Emphases added).
Where there are other visual features that affect the overall appearance of a product, the criteria of s 19(2)(c) become relevant to assessing whether the particular visual features give rise to distinctiveness.
Where a design is based on specific visual features present on a product, the nature of the design can be identified by notionally comparing the overall appearance of the product with, and without, the relevant visual features.
For the purpose of identifying the design, even the smallest features are relevant. However when assessing distinctiveness one must have regard to the ‘overall impression’ – in which case minor features in the design will fail to create distinctiveness if they do not significantly impact on the ‘overall impression’. See Part 2, D09.3.
In typical situations, a product will inherently have visual features that are not considered to be new and distinctive, or the focus of the application. These features will typically be indicated in the representations in some generic fashion – such as by the use of dotted lines. In such situations, the visual features represented by the dotted lines do not represent visual features of the applied for design as such – they are merely indicative of the product’s generic features, and assist in assessing the overall appearance of the product resulting from the visual features that form the basis of the design. See Part 2, D04.5 for interpreting representations.
D04.4.2 Visual feature - shape, configuration, pattern and ornamentation
Under s 7(1) of the Act a visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product. Note that this is an inclusive, not exhaustive, definition. However, s 7(3) excludes the feel, the materials used, an indefinite dimension per se, and the existence of a repeating pattern per se – largely for the avoidance of doubt. Consequently, a visual feature is any characteristic that falls within the general ambit of being a 'visual feature' that is not excluded by s 7(3).
Taken as a whole the features of shape, configuration, pattern and ornamentation usually encompass most of the visible qualities of a product. That is, those features would embrace the two and three-dimensional aspects of a product, including any visual surface texture (but not the feel). However, it is never necessary to decide whether a feature is a particular one of shape, configuration, pattern and ornamentation. Rather, the feature is a visual feature if it can be properly described as being any one or more of shape, configuration, pattern and ornamentation.
Under the 1906 Act, the concept of ‘shape, configuration, pattern or ornamentation’ was of great importance as the exclusive requirement for the subject matter of a design. (See the definition of Design in s 4 of the 1906 Act). Under the 2003 Act a design is not so limited. If a design relates to a shape, pattern, ornamentation or configuration, it does have appropriate subject matter. However subject matter may also exist for a design in respect of a visual appearance that does not relate to shape, pattern, ornamentation or configuration.
As a result, case law under the 1906 Act distinguishing between shape, configuration, pattern or ornamentation [such as Kestos v Kempat Ld (1936) 53 RPC 139 at 152, Re Rollason's Registered Design (1898) 15 RPC 441 at 446] are no longer of relevance.
While it is undoubtedly the case that there is a relationship between the aesthetic appeal of a product and its visual appearance, the question of whether or not a design has aesthetic appeal is an irrelevant consideration. The relevant criterion is simply that of distinctiveness – with ugliness and attractiveness equally giving rise to distinctiveness. [This issue is discussed in more detail in Part 2, D07.6.3.2.1, in the context of the Copyright overlap.]
It may be noted that colour is inherently a visual feature. Similarly, texture and surface finish – to the extent that they are visible rather than felt – are visual features. In this respect, it is important to note that a design relates to the ‘look’ of a product, not the ‘feel’ of a product. See Part 2, D04.4.7.1.
See ALRC recommendation 8. The government response considered that the features of ‘colour’ and ‘surface’ did not add anything to the definition – that is, were inherently included in the concept of a visual feature.
D04.4.3 Variable visual features
Many products have elements of inherent variability. As stated in Reckitt Benckiser (UK) 76 IPR 781 at para 10:
'… design protection is for the overall appearance of a product, not of its material of manufacture. Some products have a component of appearance that inherently depends on use (for example, an item of clothing such as a jumper ‘looks’ different depending on whether it is folded, hung on a clothes hanger, or worn). Other products are fundamentally static in appearance (for example, a hammer). In assessing a design, the informed user would recognize that features of variability that are inherent in the product are not per se visual features of the design, and duly discount the effects of such variability from the overall impression of the design. But for products that do not have an inherent variability of appearance, there is no basis for an informed user to assess the visual features on any basis other than in the form shown.'
In Reckitt Benckiser (UK) 76 IPR 781, the design related to a soap tablet involving a water-soluble skin and a dependant skirt. The cited trade marks showed a similar tablet with a crumpled skirt. The delegate concluded (para 13):
In the trade marks, the skirt might be described as a crumpled depending skirt that may be rounded at the corners. In the designs, the skirt is similarly depending. The representations indicate some degree of undulation, but with the skirt not having significant rounding at the corners. It is also clear from the representations of both the designs, and the trade marks, that the crumpling is not an ordered or structured crumpling with a fixed pattern. Rather it has the appearance of random crumpling that arises when there is an excess of material. It therefore seems to me that any difference in the appearance of the skirt is merely one of degree – not one of significant difference in form or appearance.
It may also be the case that a visual feature of a design will significantly change upon use of the product. That changed appearance is not relevant to the considerations of newness and distinctiveness of the product before use, and the design protection will not extend to the used product having a different overall impression. As stated in Reckitt Benckiser (UK) 76 IPR 781 at para 10:
‘… for products that do not have an inherent variability of appearance, there is no basis for an informed user to assess the visual features on any basis other than in the form shown. In this regard I stated in Reckitt Benckiser Inc  ADO 1:
In particular, the informed user standard is not a constraint on whether a particular item of the prior art can be considered – its role is limited to the standard to be applied when determining whether the design is distinctive having regard to a particular item of the prior art.
To this I would add that the informed user standard also is not a mechanism to incorporate speculation on how an otherwise invariable product might change in appearance as a result of use. At most, an informed user recognizing that a visual feature might change as a result of use might accord lower significance to that feature when assessing the overall appearance of the design. However any specific changed appearance is only part of the prior art base if that changed appearance has been separately published, or if there is evidence of use of the product in Australia in a manner that resulted in that changed appearance (see s 15(2)(a) - designs publicly used in Australia).’
The ALRC report (Designs"  ALRC Report 74) notes [at 4.30 – 4.32] that the fact that a computer monitor displays icons in use does not make the icons a visual appearance of the monitor any more than printer output provides the visual appearance of the printer. The ALRC then stated [at recommendation 20]:
Screen displays should not be able to be protected as designs. It is not necessary to include any special provision on the new designs legislation to confirm this.
The confidence by which the ALRC stated its position appears to derive from a strand of precedent extending back to 1912, which was summarised in the joint judgement of the full bench of the High Court in Firmagroup: ‘The only design features that are susceptible of protection are those features which convey the idea of “one particular and specific appearance...”’ [Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483, 488.]
This reasoning was also applied the first time the question of registrability of visual features displayed on the screen of a computer monitor came before the Designs Office:
… the applicant's designs are displayed on a computer screen, I doubt that the viewer would see the computer screen or any other hardware associated with the computer as being characterised by those designs, since he or she knows that the screen image is transitory and that the hardware is still the same hardware as it was before the design was displayed on the screen. Because the designs are transitory they do not give a "particular individual and specific appearance" to the computer screen. I think the viewer would see the designs as characterising the software rather than the hardware. Thus, whilst there may be some argument that the applicant's designs are generally "applicable" to a computer screen, I think that they are not "applicable' within the meaning of the Designs Act. [Comshare Incorporated (1991) 23 IPR 145, 147]
The above considerations were also tested in Apple Inc  ADO 6. The decision included:
- Whether the registered design, an image placed inside a square dotted line box titled ‘display screen’, was in fact a product?
- Whether the ground for revocation that was taken, citing a blank display screen, was appropriate?
The Hearing Officer dismissed the argument that the registered design did not meet the definition of a product. This finding relied on the product name ‘display screen’ being something that is manufactured, and so meeting the definition of a product.
When determining whether the citation raised (blank display screen) was appropriate, the owner argued that the examination should have been on the basis of what was filed (graphic included) and not on assumptions as to the product being on or off.
The Hearing Officer, whilst acknowledging that legislation does not specifically direct the assessment of visual features of a product in a resting state, remained unconvinced that an image that appears on a display screen would normally be considered a quality or attribute of a display screen.
The decision also discussed whether the section 7 definition of a visual feature should allow for the ‘at rest’ determination. The Hearing Officer focused on this definition including qualities or attributes of the product. The decision includes (at 35):
'….I have been unconvinced that an image that appears on a display screen would normally be considered a quality or attribute of a display screen per se.'
The Hearing Officer, in answering the claim that images that appear on display screens are critically important visual features, noted evidence that had been submitted by an industry expert and explained (at 25):
'….The images that appear on a display screen are not visual features of the display screen. They are manifestations of software in combination with hardware and streams of electrons.'
In practice Examiners will need to carefully assess the design as it appears on the Register to ascertain whether, on balance, the relevant visual features are produced by software.
In the case of a display screen this is generally very likely to be the case. Visual features that are displayed on, for example, the screen of a computer monitor through the operation of software do not exist when the computer is switched off.
Alternative findings open to the Examiner may be that the relevant visual features exist as permanent markings such as paint on the surface of the screen, or that some visual features are permanent while others are transient.
In cases of doubt, the Examiner will object that the design is not distinctive (see also Part D09.1.1) and seek clarification from the owner.
D04.4.4 Functional purpose
Section 7(2) provides that a visual feature may, but need not, serve a functional purpose.
In many instances the shape of a product is dictated by a functional purpose. For example, the spout of a water jug might have a particular shape to prevent the water from dribbling when pouring. The fact that a visual feature has a functional purpose, or indeed has an appearance that is entirely dictated by a functional purpose, is irrelevant to the question of whether that feature is a visual feature of the design.
However a distinction must be drawn between a specific shape that has a functional purpose, and a principle of design to meet a functional purpose. [Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483, 487]
There must be a specificity of the visual appearance of the product conveyed by a registrable design. Features of a design that do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform, and which are consistent with a variety of particular shapes in articles copying those features, are not amenable to protection.
In circumstances where a feature is displayed in a multiplicity of appearances, the issue will usually result in a conclusion that either:
i. there is more than one specific design disclosed – corresponding to each of the individual appearances of the feature, or
ii. the multiplicity of appearances of the particular feature is only consistent with that feature being indicative of generic features of the product, and not a visual feature of the design. [That is, distinctiveness of the design cannot result from that feature.]
The relevant form of protection for a functional purpose per se is a patent. If having applied for a design, the applicant wants to apply for a patent:
- The Australian design application is not a Convention application for the purpose of an Australian patent application. [However, the applicant might wish to seek professional advice about whether filing an application under the Patent Cooperation Treaty could avoid this issue.];
- The design is published when it is Registered – with that publication being available to anticipate any subsequently filed patent application. However the Grace period provisions of regulation 2.3(2) under the Patents Act may be available.
Where this situation arises, the applicant should be urged to seek professional assistance – as the issues are potentially complex and costly.
D04.4.5 Internal features as visual features
The concept of a 'visual feature' in the 2003 Act extends to features that are not visible in normal use. Thus, internal features of a product are protectable as a design to the extent that they are visual features as opposed to other types of features (e.g. tactile features, materials of construction etc.). The fact that the visual features are not normally visible in normal use of the product is not per se relevant.
This arises from recommendation 27 of the ALRC Report, which expressly recommended that the design of the internal shape of a product should be capable of protection provided it meets the novelty and distinctiveness requirements. The ALRC considered this would be achieved by removing the criterion of ‘judged by the eye’ from the test for newness and distinctiveness – which has occurred in the 2003 Act.
However, while the internal shape of a product may be proper subject matter for a design, the fact that it is internal to the product has a bearing on the assessment of distinctiveness under s 19, where regard must be had to the overall impression [s 19(1)] by an informed user [s 19(4)]. In particular:
- Where the product is one which in normal use is ‘opened’ such that internal features become visible, the overall impression would clearly have regard to those internal features.
As in, for example, Gramaphone Company Limited v Magazine Holder Company (1910) 27 RPC 152, where regard was had to the appearance of a gramophone player when the lid was raised. Also, the appearance of a doll in a ‘jack-in-the-box’ device.
- Similarly, where the internal features of the product became apparent in normal use – even though the product is destroyed in the process. [See, for example, Ferrero’s Design  RPC 473, in which the internal appearance of a confectionary egg only became visible when the egg was broken for consumption].
- However, where the internal appearance does not become apparent during normal use, (for example – the internal construction of a sealed lead-acid battery) the internal appearance cannot contribute to the ‘overall impression’ gained by the informed user. That is, such internal visual features cannot give rise to distinctiveness.
D04.4.6 Colour as a visual feature
Although colour is not specifically referred to as a visual feature in s 7, there is little doubt that colour is a visual feature. See, for example, the Government response to recommendation 8 of the ALRC report into the Designs System.
The Government response to ALRC recommendation 8, dealing with the definition of ‘visual features’, was:
- Accepted in part – the Government considers the features of ‘colour’ and ‘surface’ do not add anything to the definition and may cause confusion and lead to designs losing registration.
The practical issue is the effect of colour when assessing distinctiveness. For example, in the case of two objects bearing the same shape and configuration but differing in colour – will the difference in colour be sufficient to establish distinctiveness? In Review 2 v Redberry Enterprise  FCA1588, Kenny J adopted the views expressed in Smith, Kline & French Laboratories Ltd’s Design Application  RPC 253 at 261 – to the effect that the significance of colour to the design depended on the circumstances – and in particular the assessment by the informed user.
D04.4.6.1 Colour as used in representations
A particular issue is the significance of colour in the representations of the design. This is assessed from the perspective of the informed user – having regard to the prior art. If colour is important, it is because factors relevant to the design or the drafting style lead to that conclusion.
For example, where a design is characterised by a surface pattern, and the representations show that pattern in colour, it would be appropriate to treat the specific colours as being visual features of the design – unless there is a statement of newness or distinctiveness (or some other clear reason) to conclude that the colour was not a visual feature.
[In Reckitt Benckiser Inc  ADO 1 and Reckitt Benckiser N.V  ADO 3 amendments were made to remove any doubt that the colours shown in the representations were visual features of the designs.]
In Review 2 v Redberry Enterprise  FCA1588, Kenny J stated:
50 The applicants placed some emphasis on the fact that Parliament did not adopt the recommendation in ALRC Report No 74 that "visual features" should include "colour and surface": see ALRC Report No 74, recommendation 8, at p 60. As the commentary to the recommendation noted, however, the addition of "colour" to the conventional list that included "pattern" and "ornamentation" was not strictly necessary. Whilst "colour" is not specifically mentioned in s 7 of the Designs Act as a distinct element of "visual feature", colour might in some instances be regarded as a "visual feature", having regard to the inclusive formulation of s 7(1) and the continued reference to pattern and ornamentation.
51 Ultimately, it seems to me that what was said in Smith, Kline & French Laboratories Ltd’s Design Application  RPC 253 at 261 is as true a guide as any. In this case, Graham J (as the UK Registered Design Appeals Tribunal) said that: ... colour cannot be ignored, though normally differences in colour are unlikely to be important. Colour may or may not make a material difference, depending upon the circumstances and nature of the design in question.
I would adopt this approach in considering designs registered under the Designs Act.
52 The fact that a design is registered in colour through the use of colour photographs (unaccompanied by a statement of newness and distinctiveness) is relevant to determining the extent of the monopoly sought and given. Everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration. The pattern (including colour) that is shown on the registered Review Design is thus part of what is protected, and is, as the above reasoning indicates, to be accorded some weight. How much weight is to be given to pattern and colour will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user, having regard to the prior art, and the freedom of the designer to innovate. If colour is important, it will be so because the factors relevant to the registered design lead to this conclusion. As indicated already, pattern, including colour, is a feature that an informed user would consider has some significance in creating the overall impression of the Review Design, a conclusion borne out by the use of colour photographs to depict the design in the registration application.
The exclusions of feel, and of the materials used, derive from recommendation 9 of the ALRC report, which recommends that the look of a surface be protectable, but not the surface material or the feel of the surface. The exclusion of certain aspects relating to indefinite dimensions is supplementary to the indefinite dimension provisions of s 6(3).
D04.4.7.1 the feel of the product:
The feel of the surface – whether that is a feeling derived from texture, tactility, smoothness/grip, hot/coldness – is excluded by s 7(3)(a) from being a visual feature of the design (and is therefore not protectable per se under the Designs Act.) However the visual appearance of a product may derive from the surface finish applied to that product – and that appearance is protectable.
In examination there is no objection per se to the fact that a design or its associated documentation purports to assert newness or distinctiveness in the feel of the product. When assessing newness and distinctiveness, any such assertions are to be disregarded. However if a citation is raised where the assertions would be relevant, the Examiner should include in the objection an explanation to the effect:
The asserted newness or distinctiveness based on the feel of the product is not a visual feature under s 7(3)(a), and therefore cannot provide a basis of distinction from the citation.
D04.4.7.2 the materials used in the product:
The visual appearance of a product may derive from the material used in the manufacture of that product – and that appearance is protectable. However the material used is excluded by s 7(3)(a) from being a visual feature of the design (and is therefore not protectable per se under the Designs Act.)
In examination there is no objection per se to the fact that a design or its associated documentation purports to assert newness or distinctiveness in the material used to make the product. When assessing newness and distinctiveness any such assertions are to be disregarded. However, if a citation is raised where the assertions would be relevant, the Examiner should include in the objection an explanation to the effect:
The asserted newness or distinctiveness based on the material used to make the product is not a visual feature under s 7(3)(a), and therefore cannot provide a basis of distinction from the citation.
D04.4.7.3 in the case of a product that has one or more indefinite dimensions:
1. the indefinite dimension
2. if the product also has a pattern that repeats itself – more than one repeat of the pattern
This exclusion arises as part of the special provisions for products involving one or more indefinite dimensions. Its purpose is to ensure that when a design involves an indefinite dimension, or a repeating pattern – the fact of the indefinite dimension, or repeats of the pattern, does not constitute a visual feature, and therefore cannot be used to establish distinctiveness over another product.
For example, in a bottle containing a segment of indefinite dimension (the mid-section), the length of that segment is not a visual feature of the design. Consequently, the design would not be new and distinctive over a bottle having all the other features of the bottle but with that segment being of a particular length. Conversely, the design would be potentially infringed by that bottle having a segment of particular length.
For patterns, the exclusion only arises in the context of a pattern on a product having one or more indefinite dimensions. [This exclusion does not arise in respect of pattern repeats on a product of finite dimensions.]
- A pattern repeating in one dimension might entail a repeat unit of fixed size which is repeated in that one direction – in which case the design rights reside in the repeating unit. Or it might entail a pattern that is of indefinite dimension in one direction (e.g. a pattern of repeating stripes) – in which case the indefinite dimension (the length of the stripes) is also not a visual feature.
- In the case of a pattern repeating in two dimensions, the design rights reside in the repeating unit.
- In principle, a repeating pattern may be comprised of sub-elements that themselves entail repeating elements. However, such sub-elements are of finite size within the overall pattern – and are thus not separately subject to this exclusion.
That is, the indefinite dimension does not provide a visual feature. Where there is a repeating pattern, the visual feature is a single base unit of the pattern – and if that base unit has an indefinite dimension (e.g. a pattern of stripes) their indefinite dimension is not a visual feature.