D09.3 Test for Distinctiveness

Date Published

The test for distinctiveness is specified in s.16 (2) as:

A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.

The ALRC made several recommendations about how this test should be applied, which are set out in s.19 of the Act. However before considering the issues of s.19, the basic nature of the test must be understood, including the individual components of the phrase ‘substantially similar in overall impression’:

Impression

The Macquarie Dictionary defines ‘impression’ (in the context as used in the Act) as:

  1. a strong effect produced on the intellect, feelings or conscience
  2. the first and immediate effect upon the mind in outward and inward perception
  3. the effect produced by an agency or influence
  4. a notion, remembrance or belief, often one that is vague or indistinct

From these it may be concluded that the use of ‘impression’ in s.16(2) and s.19 entails an assessment of the appearance of a product that does not involve an analysis of the small details of its appearance.

In recommending the use of the word ‘impression’, the ALRC report notes that the word has been used in designs law already, and notes that ‘first impressions’ are important in determining whether there is infringement of a design, citing Wanem v Tekiela (1990) 19 IPR 435 at 440, summarising the decision in Dart v Decor [1989] AIPC 90-569.

However, and as discussed below, the assessment is made on the basis of the standard of the informed user (S.19(4)). This necessarily means that the relevant impression is that gained by an informed user – and not that gained by an uninformed casual glance of the product. In that regard, the informed user may often have particular interests in certain aspects of a product, such that their attention is preferentially directed to those aspects. That is, the impression gained will necessarily depend upon the relative significance the informed user places on the various features.

Overall Impression

The reference to overall impression requires consideration of the product as a whole, and not just that part of the product bearing the particular visual features of the design. For example, a change of detail in a small innocuous visual feature on a large product might have no effect on the overall appearance of the design.

This was an important recommendation of the ALRC report, and was accepted by the Government with the comment ’the Courts… should assess appearance from the perspective of the whole appearance of the competing designs.’ This is also reflected in the dictionary definition of Design {means the overall appearance of the product…}.

Similar

The test of ‘impression’ recognises that differences in detail can exist if they do not affect the overall impression. However the use of ‘similar’ indicates that strict identity of impression is not required – similarity of impression is sufficient.

Substantially similar

However mere similarity is not sufficient – there must be substantial similarity. That is, there must be ample commonality in the overall impression, without them necessarily being identical.

Accordingly it may be seen (subject to the various conditions set out in s.19) that the test of ‘substantially similar in overall impression’ has a focus on the overall appearance of the product without focussing on small details. Importantly, while the impression may be different, the degree of difference cannot be large.

Mosaicing impermissible

The comparison to determine distinctiveness is against individual items of prior art. It is impermissible to combine items of prior art to conclude that the design is not distinctive. As was said in LED Technologies v Elecspess [2008] FCA 1941 at para 12:

… a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being new and distinctive.

Environmental considerations

When assessing whether a design is distinctive, the significance of visual features might depend upon whether the product is viewed in its environment of normal use, or in a sales environment. For example, in Woodhouse UK v Architectural Lighting Systems [2006] RPC 1, the design related to street lanterns which were typically located about 8 – 10 metres above a road. The evidence showed that the lanterns were assessed and sold using physical specimens present on a table, with lighting engineers being present. However the court determined that the informed user was ‘a regular member of an urban development team who is primarily interested in the appearance of street furniture….’, and concluded (para 52):

…in my judgement this process of customer persuasion as a result of close inspection is not the proper situs for the relevant comparison to be made by the “informed user”. In addition to a table inspection, the informed user must have in his mind’s eye the visual impact of the lantern in situ – during the daytime moreover and from a little distance from the base of the pole upon which the ensemble is suspended. After all, these products must not only work reliably and be convenient to service, but most importantly, they must have outdoor eye appeal. When that comparison is made, details which are quite visible on the borough surveyors table (or whatever) may become less so in situ.

That is, while a comparison of products at close range outside of their environment of use may identify similarities and differences, the significance of those features must be assessed in the environment relevant to the informed user. For example, in the case of the street light where the design related to the overall external appearance of the lamp, the relevant informed user was concerned about the appearance of the lamp in the street-scape – and the appropriate viewing distance was from ground level. However for a component part of such a lamp (for example, the light socket within the lamp) the informed user might be the lighting engineer, with the relevant viewing distance being the close-up view one would have when maintaining a lamp.


D09.3.1  The presence of extra visual features in citations

The interpretation of ‘extra’ visual features shown in the representations of a design is discussed in D04 – see D04.1.

As discussed in para D04.4 a design, in relation to a product, means the overall appearance of the product resulting from one or more visual features. However, products might typically have features in addition to those represented in a design. For example, if a design is represented by way of a black & white line drawing, an actual product will inevitably have colour – which is a visual feature. Similarly a product might have additional visual features – for example, for a design based on the shape of a bottle, the bottle as sold will typically bear a label that provides visual features in addition to those shown in the representations of the bottle.

Note that the application of colour can, in the right circumstances, give rise to a new design.

These situations were discussed in Reckitt Benckiser Inc [2008] ADO 1, and Reckitt Benckiser (UK) Ltd [2008] ADO 6.

The designs in Reckitt Benckiser Inc [2008] ADO 1 related to containers bearing a label having a clear central circular area clear of any markings, with radiating bands extending to near the edge of the label area. The prior art designs showed containers of the same type and colour, and the same pattern on the label. However the label as shown in the citations contained additional textual material in large prominent lettering. The owner argued (in part) that the designs were distinctive because they did not contain the lettering that was present in the citations.

After reviewing the definition of a design, and noting that the dictionary definition:

invokes a causative relationship between the appearance and visual features. Significantly, that causative relationship is not tied to ‘the visual features of the product’, but to ‘one or more’ visual features of the product. That is, as a general proposition a design is constituted by some only of all visual features present in the product.

The delegate concluded:

In my view the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.

The design in Reckitt Benckiser (UK) Ltd [2008] ADO 6.related to a pharmaceutical tablet of a certain shape and colouration. The citations were identified as ecstasy tablets. One of the citations bore an impression of a duck on one face of the tablet – which was not present in the design. The delegate followed the reasoning in Reckitt Benckiser Inc [2008] ADO 1, and stated:

In my view, this situation {of Reckitt Benckiser Inc [2008] ADO 1} applies in the present case. All the features of the present design are admittedly present in this citation. Furthermore, an informed user would have awareness that pharmaceutical tablets frequently contain indentations on one or both faces – such as a line for cutting a tablet in half, dosage indications, or the range of markings that are apparently present on tablets like the cited ecstasy tablets. Consequently, in the absence of anything in the present design to indicate that the design is to the exclusion of, or incompatible with the presence of, additional visual features on the face of the tablet (in particular, indentations), the informed user would readily conclude that the present design is present in the tablet of the citation – and therefore is not distinctive over that citation.

Colour (as a visual feature) was also deliberated in Review 2 v Redberry Enterprises [2008] FCR 1588. This decision considered a clothing registration owned by ‘Review 2’ and a claim that ‘Redberry’ had infringed the registration with their own clothing design. An important consideration was that the representations of the (clothing) design, submitted by ‘Review 2’ in the application, were in colour.

When discussing the significance of colour as a visual feature, Kenny J indicated that:

[The] weight… 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."

The relevant art supported a claim that an informed user would consider colour as a significant visual design element. This was an important factor in the case. Taking into account the colour representations submitted by ‘Review 2’, deemed to be an important design component due to being submitted in this fashion, Kenny J found that the ‘Redberry’ did not infringe their rights due to in part the colour differences between the clothing designs.


D09.3.2  Inferring the impression – hidden perspectives

It will frequently be the case that a citation does not expressly display the cited product from all perspectives. This can lead to a situation where the present design is substantially similar in overall impression having regard to all available views of the citation – leaving open the question of whether it would be substantially similar if regard was had to the hidden view of the citation.

This situation arose in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114. In that case, the citation was a document that showed the product in front perspective view only. However the Judge was prepared to infer the impression that would be gained from viewing the side of the product not expressly shown in the citation.

When it is necessary to infer the impression resulting from hidden perspectives, the considerations include:

  • the expected or actual symmetry of the product;
  • the constraints on the appearance of the ‘hidden’ side imposed by the available views of the product;
  • the appearance that would otherwise be expected of such products;
  • the nature of the features expected to be present on the ‘hidden’ side – there is no basis to infer the existence of an ‘unusual’ visual feature on the ‘hidden’ side of a product.

The relevant paragraphs from the World of Technologies v Tempo decision is:

60 The respondent relies first upon the publication, at the Canton Fair in April 2005, of a brochure depicting the appearance of the MC-801 vacuum cleaner, for the purposes of s 15(2)(b) of the Designs Act. The original of that brochure is before the court. I have compared the brochure with the design as registered. It is common ground that the vacuum cleaner shown in each document is one and the same product. The copy of the registered design which is before the court is a photocopy. The representations of the vacuum cleaner in it are less distinct than the corresponding printed colour photographs appearing on the Suzhou Fak brochure of April 2005. Further, in the design as registered the product is shown in side view (both sides), in bottom view, in top view, in back view, in front view, in back perspective view and in front perspective view. As represented on the brochure, the product is shown only in front perspective view. For that reason, I am unable to conclude that the design is identical to that shown in the brochure. Accordingly, I do not hold that the design is not new for the purposes of s 16(1) of the Designs Act.

61 However, I consider that the design as applied for and subsequently registered is substantially similar in overall impression to the design disclosed in the Suzhou Fak brochure of April 2005. Although shown on the brochure in front perspective view only, the impression obtained from that angle permits the viewer to make a reasonable assessment not only of the side, but also of the front, of the vacuum cleaner. Assuming, as I do, that the product is symmetrical, I take it that the other front perspective view would convey the same impression. Further, the item is displayed on the brochure in such a way as to permit the viewer to gain a reasonably good impression of the appearance of the product from the top. The only faces of the product which it is impossible to perceive from the brochure are those of the rear and of the underside. Notwithstanding these omissions, I consider that the vacuum cleaner is sufficiently represented on the Suzhou Fak brochure to give a good impression of the appearance of the design of the product as a whole, as required by s 19(3) of the Designs Act. Taking that approach, I find that the design for which the applicant applied for, and subsequently secured, registration is substantially similar in overall impression to that which appeared on the printed brochure for the MC-801 vacuum cleaner distributed at the Canton Fair in April 2005. The latter was a design published in a document outside Australia and was, accordingly, part of the prior art base for the purposes of registrability.

More recently this issue was considered in Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.

In this case the cited art did not include representations showing all angles of the product bearing the design. As such, the overall impression was inferred during examination, taking into account hidden perspectives. It was argued that it was not appropriate to infer the overall impression, as the particular circumstances of this case differed from the ‘Tempo’ criteria set out in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114 and reproduced in the four dot points above.

The decision however makes the point that the ‘Tempo’ criteria should not be considered a definitive set of prerequisites (to consider hidden perspectives).  What also should be taken into account is whether a reasonable assessment of the hidden views can be made utilising the angle(s) supplied as part of the representation(s).