D04.5 Interpretation of representations

Date Published

D04.5.1  Drafting styles

The representations are a critical element of any design registration. They constitute the primary means of setting out the visual features which provide the basis for the design. They also assist with the identification of the product (which is otherwise stated on the application form) to which the visual features are applied. And they assist in identifying the overall appearance of the product resulting from the application of the visual features. Accordingly a proper interpretation of the representations is critical to the assessment of the design rights.

In Review 2 v Redberry Enterprises [2008] FCR 1588, it was stated (paragraph 52):

'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 {emphasis added}.'

That is, when assessing a design it is necessary to interpret the representations and the relative importance of the different visual features.

It should be noted that the requirements in Schedule 2 are essentially drafting guidelines. In the formalities [regulation 4.04(1)(g)] the requirement is one of ‘substantial compliance’, with the primary consideration being the reproducibility of the representations. Compliance of the originally filed documents with the formality requirements is not an issue that can be raised during examination. Formalities issues can only arise in examination in respect of documents filed at that time – and are dealt with under regulation 11.27 rather than the examination process per se.

There are no mandatory rules to interpreting drafting elements in a particular way – although there is a strong presumption that when elements are represented in a different manner, it is for a purpose. Each design has to be considered objectively on its merits.

In Review 2 v Redbury Enterprises [2008] FCR 1588, the Design was said to be ‘depicted on the register in a colour photograph of a store dummy wearing a garment…’. There was no controversy about the role of the dummy – it being understood by all parties that the dummy was not part of the design, even though it was present in the representations.

There will be times where it is difficult to ascertain the design from the representations and other documents – either in understanding the nature of the product, or understanding the visual features of the design. The Designs Act does not include a ground of revocation based on clarity of the representations. As a result, in such circumstances the Examiner MUST come to a view about the scope of the design – applying the standard of the informed user. However, Examiners should note that the fewer the visual features of the design the broader the monopoly, and hence the broader the prior art base that may be relevant to the design. Accordingly the Examiner should:

  • in the first instance, construe the design broadly, and develop a search strategy on that basis (with a focus on obtaining citations with the least effort);
  • include a file note about how they have construed the design; and
  • in any adverse report, advise the owner about how the design has been construed.

The following provides guidance on some of the typical variants that occur in representations.

Dashed v solid lines

A common situation involves some elements of the representations being shown in solid lines, while other elements are in broken (dashed or dotted) lines. Broken lines are frequently used to indicate things such as:

  • elements of the product other than those bearing the visual features of the design;
  • boundaries (e.g. of a pattern applied to part of a surface);
  • stitching;
  • perforations;
  • hidden elements (typically in perspective views);
  • features that establish an environmental context;
  • features outside the scope of the design (such as the store dummy in Review 2 v Redberry Enterprises referred to above.  

Indeed, rarely a drafter might use dashed lines to indicate the visual features of the design, and solid lines to indicate generic features of the design.

In all instances, the Examiner needs to interpret the representations in the context of the design as a whole, applying a presumption that differences in the manner of representation of features is for a purpose, and make this assessment in the context of the standard of an informed user.

Highlighting/shading/Colour

Sometimes some or all of the visual features of a design will be highlighted in some manner – e.g. colour, shading, cross-hatching. At other times that highlighting may be used to indicate features of the product that are not visual features of the design. Examiners will need to exercise judgement in interpreting the representations, with due consideration to the product name and any statement of newness and distinctiveness.


D04.5.2 The nature of representations

Representations are just representations of the design, and are not the design per se. In Sportservice Pty Ltd [2007] ADO 6 it was stated:

'…it is important to recognize that a design is ‘the overall appearance of the product resulting from one or more visual features of the product’ – as per s 5 of the Act – and that the assessment of newness and distinctiveness required by s 19 is of the design. On the other hand a representation is ‘a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen’ – s 5. While a specimen might typically be a product embodying the relevant visual feature, drawings are not. A drawing is used to ‘represent’ the product and the visual features; it allows the design to be comprehended. Consequently, it is important to recognise that the level of visibility of visual features in representations (considered as drawings) may be different (that is, either more or less visible) from the level of visibility in a real product bearing the visual features. And the assessment of distinctiveness must be conducted on the basis of the design (that is, products bearing the visual features) applying the standard of a person who is familiar with the product to which the design relates – not on the basis of a simple comparison of representations.'


In the Sportservice case, the delegate noted:

'…the collar as shown in the representations looks quite inconspicuous. The collar as existing on a ‘real’ product was more conspicuous than the representations suggest. I have closely compared the representations with the actual product, and I’m satisfied that the representations do accurately represent the actual product.'

As the feature appeared more prominent in the actual product than in the representations per se, and the representations were a fair representation of the actual product, the delegate could not be satisfied there was a lawful ground of revocation.

However the representations must be a fair representation of the actual product – as otherwise the product will embody a different design to that shown in the representations (and will therefore be of no utility in assessing the overall impression of the design shown in the representations.)

There is no doubt that when assessing infringement, the comparison to be made is of the infringing product and the design. See LED Technologies v Elecspess [2008] FCA 1941 at paras 74, 75. However it is necessary to determine the scope of the design – and this requires consideration of how the design would appear on ‘real’ products. Importantly, reference to the real product behind the design is only relevant (if at all) for appreciating the effect of visual features on the overall appearance of the product.

D04.5.3 Unclear representations

There may be times where the representations are particularly difficult to understand, either because of complexity in the representations, or because of lack of clarity in the drafting processes.

In LED Technologies v Elecspess [2008] FCA 1941, it was argued that the design should be revoked under s 120 (1) of the Designs Act because the visual features of the registered design are unclear and are thus invalid. The judgement appears to accept the possibility of revocation on that basis – even though this ground of revocation does not exist in s 93 (dealing with revocation generally) or in any other provision in Chapter 7 of the Act, and s 120 is concerned with rectification of the register (which prima facie is about correction rather than revocation.)

Examination under s 65 is limited to the grounds of newness and distinctiveness, as well as the issues of s 43 of the Act. Assuming the decision in LED Technologies v Elecspess is correct in contemplating revocation under s 120 if the representations are unclear, that ground of revocation is not available under examination.

Where an Examiner has difficulty in interpreting the representations, they nevertheless need to interpret the representations as best they can. In such circumstances, if the representations are reasonably open to be construed consistently with relevant prior art – an objection of lack of distinctiveness should be raised.

It may be noted that the decision of LJ Fisher v Fabtile Industries (1978) 1A IPR 565 [referred to in LED Technologies v Elecspess at para 41] is fully consistent with the representations needing to be interpreted, with the interpretation being (in the context of the 2003 Act) that of the informed user. While Fisher v Fabtile suggests (at page 571) that:

'I am clearly of opinion that a registered design in order to be valid, must be reasonably “clear and succinct”,'

the Designs Act 2003 does not impose any such requirement per se.

The Fisher v Fabtile decision notes a warning ‘against importing too readily into designs law principles of patent law, without any authority in the legislation itself’, citing Gramophone Co Ltd v Magazine Holden Co (1911) 28 RPC 221 at 226. Neither the Designs Act 2003 nor the Designs Act 1906 contain any requirement that the representations be ‘clear and succinct’ – either in the Act, the body of the regulations, or the schedule setting out the formal requirements. The requirement of being ‘clear and succinct’ has been an express requirement in patent law since the Patents Act 1952, deriving from the UK Patents Act 1949. Since the design right is primarily dependant upon the representations, arguably this importation of a patent concept is no more than an expression of the self-evident fact that an effective design right depends upon the representations adequately setting out the design.

Where representations are difficult to interpret, the ability to assess newness, distinctiveness and infringement are necessarily compromised. In examination, it is appropriate to interpret ambiguous or unclear representations in a manner consistent with possible citations from the prior art base. In infringement proceedings, a court might additionally decline to award damages under the innocent infringement provision of s 75(2).