D04.6 Role of a Statement of Newness and Distinctiveness

D04.6.1  Illustrative statements

The Statement of Newness and Distinctiveness arises in s.19(2)(b) in the context of assessing the design for distinctiveness. Its origin is recommendation 50 of the ALRC report, which stated:

Where a visual feature that is claimed to be new and distinctive relates to only part of the product, the court should pay particular attention to that part of the product but only in the context of the whole of the product.

To illustrate what it had in mind, the ALRC gave an example of a cup with a handle:

… if a cup is designed with a new and distinctive handle, the design owner will be able to register the design of the cup and identify the handle as the new and distinctive feature for which protection is sought. If a competitor takes the handle and places it on a differently shaped cup, the court will be directed to consider when determining whether the exclusive right has been infringed whether the design of the new cup is substantially similar in overall impression to the design of the old cup, paying particular attention to the designs of the handles in each case but not disregarding other parts of the cup. The design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.

The ALRC recommended that such statements be required for all designs – Recommendation 47. However the Government response was that while applicants should have the option to provide such a statement, it should not be mandatory.

To understand the effect of a Statement of Newness and Distinctiveness, it is important to understand that:

• A statement does not derogate from the need to assess distinctiveness of the design in the context of the overall impression of the product bearing the design. For example, if a visual feature is insignificant in the overall impression of the product bearing the design, specifying that feature in a statement does not alter that fact;
• The wording of some statements is intended to assert that the design is based on only certain types of visual features defined in s.7(1). For example, by asserting that the design ‘relates to the features of shape or configuration’ (only), the owner is asserting that elements of pattern or ornamentation are to be given less regard and may not provide distinguishing features (either for distinctiveness, or infringement).
• Where the statement identifies particular visual features that apply to the whole of the design, the effect is to narrow the scope of the design. For example, if the statement indicated that the surface of the product was a particular colour the design right would be limited to products of that colour.
• Where the statement identifies features that relate to only part of the design, distinctiveness is assessed having particular regard to those features – albeit in the context of the design as a whole [s.19(2)(b)(ii)]. In this situation, the statement functions to distinguish between the visual features of the design, and features that are generic to the product. That is, such a statement may result in the design being of broader scope than might otherwise be the case.

The considerations under s.19 that arise from a statement assume that the statement is a positive assertion with respect to certain features. If a statement is worded as a negative statement (for example, that certain features in the representations are not part of the design) the statement will be interpreted as a positive statement with respect to all the other features of the design shown in the representations.

When identifying the design, it must be remembered that the design and statement should be interpreted on the basis of a presumption against redundancy – that is, a presumption that the statement sets out something that is additional to the information contained in the representations and product name. The presumption against redundancy means a reasonable interpretation that does not involve redundancy is to be preferred over an interpretation that involves redundancy. However, situations where the interpretation depends on the principle of a presumption against redundancy are expected to be very rare.

D04.6.1  Illustrative statements

D04.6.1.1  Ambit statements

Many of the statements included with applications filed in the first few years of the 2003 Act are problematic, and may best be described as being ambit statements. In Reckitt Benckiser Inc [2008] ADO 1 the Deputy Registrar had to construe the following Statement:

Each feature of the design considered separately or in combination with any other feature or features.

The Deputy Registrar noted that:

The construction of this statement is problematic. It doesn’t identify any particular visual feature or features of the design. It merely refers to features, with an ambit claim of them being alone, or combined with one or more other features. Taking this at its simplest, I could opt to identify a visual feature as the shape of the basic container as shown in each of the present designs – in isolation from any other feature shown in the design – leading to the conclusion that all the present designs lack distinctiveness since the basic container is clearly shown in the anticipatory documents.

A fundamental difficulty with this interpretation is that after registration the statement cannot be amended in any effective manner – see D10.2.2 and D10.6 – such that almost inevitably a design containing such a statement would be revokable based on the fact that just one of the visual features (when considered alone) is known. That is, this approach to interpreting such statements leads to a result that was clearly not contemplated by the applicant.

To deal with this situation, the practice of the Registrar is to interpret such ambit statements as a reference to the combination of all visual features of the design as shown in the representations.

It may be noted that this interpretation may result in the statement adding nothing to what is shown in the representations. If an owner asserts that such a statement is intended to identify just some features shown in the representations, it is appropriate to respond by:

• interpreting the statement literally;
• identifying a particular feature of the design that is known; and
• objecting to the newness or distinctiveness of that feature,

with an expectation that the objection will lead to revocation of the design.

D04.6.1.2  Descriptive statements

Statements provided by self-represented applicants can pose their own difficulties. Frequently they will provide some form of general description of the design without any particular emphasis on particular visual features, and without adding anything to what is disclosed in the representations.

A significant issue with such statements is the presumption against redundancy. As a general principle, a statement should be interpreted as providing something additional to that disclosed by the representations.

Where it is clear that the statement is intended to be no more than a textual description of the design, and adds nothing to the disclosure of the representations, it is appropriate to conclude that the statement is redundant over the representations. That is, the statement has no effect on the scope of the design.

However where a statement places an emphasis (no matter how small) on the presence (or absence) of particular visual features, the design should be interpreted on that basis.

D04.6.1.3  Limiting the design to one or more of Shape, Configuration, Pattern or Ornamentation

S.7 defines a visual feature as including ‘the shape, configuration, pattern and ornamentation’ of a product. It may be observed that a ‘real’ product necessarily has features in addition to shape and configuration. For example, the colour of the material that the product is made from, or any pattern applied to the product.

Sometimes statements are provided in the following form:

Newness & distinctiveness resides in the features of shape & configuration of the product as shown in the reps.

The intention of such statements is to make clear that the visual features of the design are limited to features of shape and configuration – irrespective of any pattern or ornamentation that might be applied to a product bearing the design.

Such statements may be intended to ensure that in infringement proceedings, infringement of a design based on shape and configuration is not avoided merely by having the product bearing a particular colour or some ornamentation. However it correspondingly ensures that any citation that has the relevant shape and configuration cannot be distinguished on the basis of its pattern or ornamentation (or any other visual feature).

A particular variation is a statement such as:

Newness & distinctiveness resides in the features of shape and /or configuration of the product as shown in the reps.

Such a statement can be notionally rewritten into three distinct versions – that newness and distinctiveness resides in:

• Shape
• Configuration
• Shape and configuration

In such situations, the design might be anticipated by a product having the same features of shape but a different configuration, or the same features of configuration but with a different shape (as well as a product having the same features of shape AND configuration).

D04.6.1.4  Statements referring to all the features of the design

A statement of the form:

Newness and distinctiveness resides in the features of the design as shown in the representations

adds nothing to the design over what is shown in the representations. Such statements are entirely redundant.

Statements of this form may have been provided in a belief that this would ensure the existence of a statement that could be amended after registration. However statements cannot be amended after registration (see D10.2.2).

D04.6.1.5  Methods of manufacture or use

Sometimes a statement will refer to how a product bearing the design is manufactured or used. Since a design relates to the overall appearance of a product, methods of manufacture or use are irrelevant to determining the scope of the design.

In principal, a method of manufacture or use may be relevant if that method or use inevitably gave rise to a particular visual feature. However the design would be characterised by that particular visual feature per se – irrespective of the processes used to create that visual feature – and should be indicated in the representations if at all possible. Assuming the statement was present at filing, its primary effect is to establish a disclosure to support an amendment under s.66, rather than affecting the assessment of the overall impression per se.

D04.6.1.6  Statements of assertion

A statement like:

‘The shape and configuration of {the/an item shown in the representations} is new and distinctive’.

cannot be interpreted as a statement that the relevant feature is new and distinctive as a matter of fact – that is a matter for objective assessment. Such a statement is to be interpreted as identifying those features which the owner believes are new and distinctive.

D04.6.1.7  Statements referring to features not shown in the representations

All visual features of a design should be indicated in some manner in the representations. A statement can operate so as to qualify a visual feature in some manner (eg by specifying that it has a particular colour), but an indication that a portion may be of indefinite length (for example) should be apparent from the representation. Occasionally statements refer to features that are entirely peripheral to the design as shown in the representations. Note that a textual description of a feature not indicated in the representations is likely to be no more than an expression of a principle of design to meet a functional purpose [see D04.4.4] and as such it would not constitute a statement of newness and distinctiveness as defined in s.19.

If the statement was present at filing, it may provide a basis for amending the design to include the peripheral features. However the amendment must not include matter that was not in substance disclosed in the original design application, representation and other documents [s.66(6)(b)].

D04.6.1.8  Features not otherwise visible

The assessment of distinctiveness is necessarily based on features that contribute to the overall impression. The person making that decision must have regard to a statement of Newness and Distinctiveness. However a statement cannot operate to render a feature that otherwise does not contribute to the overall impression, to a feature that does contribute to the overall impression. See for example Apple Computer Inc [2007] ADO 5, at para 20; while that case was concerned with ‘freedom to innovate’, the principles apply equally to a statement of newness and distinctiveness.