D09.4 The s.19 requirements

Date Published

S.19 sets out the requirements for distinctiveness as considerations required of the person making the decision. S.19(5) makes it clear that those considerations apply equally to a court.

The test for distinctiveness is applicable to situations where the visual appearance of a design differs from the prior art. That is, to be distinctive a design must be more than merely distinguishable from the prior art.

D09.4.1  Similarities and differences

S19(1) requires the person making the decision to ‘give more weight to similarities between the designs than to differences between them.’

This is a direct reflection of recommendation 37 of the ALRC, which states “The new designs legislation should give guidance to the courts in assessing distinctiveness. It should be specified that common elements are to be given more weight than differences.” The Government accepted this recommendation, noting that ‘The government also agrees appropriate legislative change will encourage the courts to give more weight to the common elements between competing designs.”

It must be observed that this involves a subjective consideration. It is not assessed in some mathematical way – such as by counting the features that are similar, and those which are different. It does not elevate similarities to being determinative of distinctiveness. Nor does it preclude a single difference being sufficient to establish distinctiveness. Rather the decision maker must make a judgement decision having regard to all features present in the design, according greater weight to those features in common.

For example, a product might have many features in common with a competing design, with one feature that is different. If an informed user considered all those features to be of equal significance, and the one feature of difference to be not particularly noteworthy to the overall impression, weighting the similarities greater than the differences would lead to a conclusion that the designs were substantially similar in overall impression. On the other hand, if the informed user considered the feature where the difference occurred was a particularly important feature in forming the overall impression, that feature would thereby have an increased weighting which may outweigh the combined weighting of all the features in common. See, for example, Icon Plastics Pty Ltd [2007] ADO 2, and Astra Zeneca AB [2007] ADO 4 and Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.

Ultimately the test is whether the design is substantially similar in overall impression. This requirement precludes a finding of distinctiveness merely by identifying differences from the prior art. Submissions that merely point out differences in detail are generally not persuasive; they must additionally establish that the relevant features materially affect the overall impression. Similarly arguments to the effect that the majority of features in a design are identical to the citation are generally not persuasive if the features that are different have a significant impact on the overall impression. [See, for example, Astra Zeneca AB [2007] ADO 4, where a relatively small visual feature was assessed as having significant prominence to an informed user; Sportservice Pty Ltd [2007] ADO 6, where a relatively small visual feature was found to have greater prominence in the actual product than was apparent from the representations and Manitowoc Foodservice Companies LLC. [2013] ADO 2 where the visual differences were considered minor and did not have the functional value or advantage that would cause an informed user to pay particular attention to them.]

There will be situations where the citation does not explicitly show all the visual features of a design. For example, the citation might show an image of a product from just one angle with the features on the ‘far side’ of the product not being visible. However the absence of visibility of the features on the far side does not preclude a finding of lack of distinctiveness. The question is – does the impression obtained from the particular viewing angle permit the viewer to make a reasonable assessment not only of the visible side, but also the other side. A factor relevant to whether such an assessment can be reasonably made is whether there is relevant symmetry in such products – such that the visible features can be said to fairly represent the hidden features. See World of Technologies v Tempo [2007] FCA 114 at para 61.

D09.4.2  State of development of the prior art base for the design

There are two aspects to this requirement.

a. If the prior art base is well developed, it may be expected that informed users will have a greater awareness of small differences between competing designs – whereas if the prior art base is poorly developed, differences will likely need to be large in order for them to be considered distinctive.

b. When assessing infringement, it is relevant to compare the extent of difference between the design and the alleged infringing product, and the design and the prior art. A finding of infringement is likely if the alleged infringing product differs from the design less than the design differs from the prior art.

It may be observed that (a) is similar in concept to that aspect of Freedom of the creator of the design to innovate discussed in D09.4.5, whereas (b) is of primary consideration in infringement proceedings.

In the context of examination: if the prior art base is well developed, this provision effectively requires the decision maker to have greater regard to smaller differences between the designs than would otherwise have been the case. This essentially is what would be expected of an informed user when appraising the designs. However, this does not mean that the test of distinctiveness in the case of a well developed prior art base is reduced to ‘is there any difference in impression between the designs?’ The overall requirement of ‘substantially similar in overall impression’ remains; differences that do not affect the overall impression (as assessed against the informed user standard) cannot give rise to distinctiveness under the guise of the state of development of the prior art.

The ALRC report has little to say on the issue of the state of development of the prior art base. In para 5.23 it states:

  • ‘… The extent to which a design is substantially different will depend on the state of the development of the prior art. A more developed prior art base will mean smaller differences will be sufficient to result in a finding that there is no substantial similarity.’

In the context of infringement, para 6.30 of the ALRC report states:

  • ‘In considering whether infringement has occurred, the court should consider whether the difference in novelty or distinctiveness between the registered design and any registered, published or previously known design is greater than the difference between the registered design and the alleged infringing design. The Act should state that, if the court finds this is the case, it should support a finding of infringement. This ‘rule of thumb test was recommended in the Lahore report.’

- and refers to Firmagroup v Byrne & Davidson [1987] HCA 37, (1987) 9 IPR 353 as the basis for this ‘rule of thumb’ test. In fact the test is not referred to in the High Court decision in that case; its basis is the minority judgement of Lockhart J in the Full Federal Court decision on that case [(1986) FCA 184 at para 13, (1986) 67 ALR 29 at 37]. The approach has been followed by Lockhart J in Dart v Décor (1989) 15 IPR 403 at 409.8, and by Cowdroy J in Caroma v Technicon [2008] FCA 1465 at para 31. However this aspect of the test is strictly limited to infringement proceedings and has no application in examination – as any citation being argued over necessarily reduces to being the “any registered, published or previously known design” that is the basis of this test.

D09.4.3 Statements of newness and distinctiveness

A statement of newness and distinctiveness is a statement in the ‘design application’ that identifies ‘particular visual features of the design as new and distinctive’. [s.19 (2)(b)]. It is noteworthy that while such a statement must be used when considering a design under s.19, the statement is not included on the Register. The register entry is limited to merely indicating the presence of a statement [Reg 9.01(d)]. Also noteworthy is that after registration, there is no mechanism available to amend a statement – see Reckitt Benckiser Inc [2008] ADO 1 at paras 9 to 20.

Where a Statement exists, the person assessing the question of substantial similarity in overall impression must have particular regard to the features mentioned in the statement. [s.19(2)(b)(i)]. If the features relate to only part of the design, particular regard must be had to that part of the design. However that must be done in the context of the design as a whole. [s.19(2)(b)(ii)].

It is important to understand that:

  • A statement does not detract 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 an informed user would have no awareness of a feature when assessing the appearance of a product, specifying that feature in a Statement does not result in the informed user being deemed to have awareness of that feature.

This is similar to the situation discussed in paras 19 and 20 of Apple Computer Inc [2007] ADO 5, in the context of freedom to innovate.

  • 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 product, 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.

For a full discussion about determining the nature of a design when there is a statement of newness and distinctiveness - see D04.6

Typically the representations of a design will indicate the product to which the design relates, will show the visual features that are specific to the design, and might indicate visual features that are generic to that product. As a general proposition, where there is a meaningful statement of newness and distinctiveness, distinctiveness will depend upon some or all of the features referred to in the statement. It follows that where the products of the design and the citation are the same (or substantially the same), distinctiveness cannot arise from a feature that is not referred to in the statement or that is otherwise indicated in the representations as being generic to the product.

Such situations may be overcome by an appropriate amendment to the representations or product name to elevate the significance of such a feature – providing the amendment complies with s.66(6). However it must be remembered that the statement cannot be amended [See D10.6]

For example – assume the design relates to a tea cup and handle, with the statement of newness and distinctiveness referring to the shape of the handle. [This is the ALRC example of a cup and handle, at para 4.14 and 6.21] If a citation was found showing that handle attached to a particular shaped tea cup, the fact that the representations show a somewhat differently shaped tea cup is largely irrelevant. Assessment of newness and distinctiveness is based on the appearance of the handle in the context of cups generally (having regard to the amount, quality and importance of the handle in the context of the cup as a whole), and the fact that the representations indicate a different shaped cup is only relevant if they demonstrate that a different product is involved.

In many situations the ‘visual features’ that give rise to the design are present on only part of the product. Nevertheless the design is the overall appearance of the product bearing the design. Where an applicant has included a statement of newness and distinctiveness, the assessment of newness and distinctiveness must have ‘particular regard’ to features specified in the statement – but nevertheless the design must be assessed in the context of the design as a whole. [s.19(2)(c)].

Note: A statement of newness and distinctiveness does not operate to convert an otherwise insignificant feature into a feature of prominence. The question is whether the informed user, when considering the product as a whole, would appreciate that the overall impression of the product is different.

D09.4.3.1 Ambit statements of newness and distinctiveness

Occasionally a statement of newness and distinctiveness will be non-specific, such as:

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

Such a statement was considered in Reckitt Benckiser Inc [2008] ADO 1. The delegate concluded that such a statement should be interpreted as a reference to the combination of all visual features of the design as shown in the representations. Note that such statements cannot be amended after registration – see D10.6.

The relevant paragraphs of that decision are:

43. 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. And as the statement cannot be amended in any effective manner, this conclusion would inevitably lead to revocation of all designs.

44. However, I am not satisfied that this is the proper approach to take to such statements of newness and distinctiveness. I think that it is proper to recognize that with the implementation of the Designs Act 2003 the significance and use of the statement of newness and distinctiveness was not well understood by users. And this led to some users including statements like those of the present, supposedly to keep the owner’s options open. In the absence of identification of any specific visual feature in the statement, I think the preferable construction of such ambit statements is to interpret them in a manner such that the design is most likely to satisfy the requirement of being distinctive. That means interpreting the statement as being a reference to the combination of all visual features of the design as shown in the representations [which, arguably, means that the statement adds nothing to what is shown in the representations.]…

D09.4.3.2 No statement of newness and distinctiveness

A statement of newness and distinctiveness is not an essential component of a design. Where no statement has been filed, s.19(3) specifies that distinctiveness must be determined by having regard to the appearance of the design as a whole.

However s.19(3) must be applied in the context of the representations of the Design. Where the representations show the product and its visual features without any form of discrimination, distinctiveness is to be determined by giving equal weight to all the visual features of the design. However where the representations indicate the relative significance of features – such as by the use of dotted lines, shading, and other drafting techniques – distinctiveness must be determined by giving due regard to the relative significance of the features as shown in the representations.

Recommendation 47 of the ALRC report would have required a statement of newness and distinctiveness as part of every design application. This recommendation was not accepted.

D09.4.4 Amount, quality and importance

S.19(2)(c) provides:

if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole.

This provision arises from the last dot point of recommendation 55 of the ALRC report, which stated:

In determining infringement the court should consider:

  • when only a part or a portion of a registered design is substantially similar to the alleged infringing design, the amount, the quality and importance of that part or portion in relation to the whole of the registered design

Which was accepted by the Government.

While the origin of this provision is associated with infringement, the fact that the tests for infringement and validity are the same means that this criterion has relevance in examination.

In examination, if one or more visual features of the design are not present in the citation the examiner must consider the amount quality and importance of the visual features not present in the citation, to the design being examined. If those visual features are small in number and have little impact on the overall impression created by the design being examined, their absence from the citation does not establish distinctiveness.

The importance (and placement) of similar visual features was one of the main considerations in the Razor infringement decision - Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796.

In this decision Nicholas J acknowledged differences between the designs in question (applied to ceiling fans). The point was made however that where similarities did exist, they were positioned in an area of significance, taking into account an informed user’s exposure to the product. The lower part of the ceiling fans, where users would view the products in operation, were similarly proportioned and conveyed a generally sleek and flat appearance.  Nicholas J concluded (at 71):

Although they exhibit a number of obvious differences in shape and configuration, these differences are in my view insufficient to displace what I consider to be significant and eye-catching similarities that create an overall impression of substantial similarity.  

Generally speaking this provision includes two key considerations:

  • It allows for an overall assessment that the design of a product be considered substantially similar in overall impression to another, even though part(s) of the product may in fact not be substantially similar.
  • Assessing under this provision requires a qualitative rather than quantitative assessment of visual features (and differences). There is no simple mathematical assessment, and the features in question need to be assessed on the basis of their importance to the purpose and operation of the product.

A holistic assessment should take place balancing the similarities (and differences) whilst taking into account the total impression and features that would be readily apparent to an informed user.

D09.4.5  Freedom of the creator of the design to innovate

D09.4.5.1  Background

The basic rule for assessing newness and distinctiveness is to have regard to the overall impression of the design, giving more weight to the similarities than the differences. However the legislation expressly provides two modifications of this principle by way of the concept of ‘freedom of the creator of the design to innovate’. In broad terms, the two modifications are:

  • Where the overall appearance is dictated by external factors over which the designer has no control, it is appropriate to assess newness and distinctiveness on the basis of factors which are under the designer’s control; and
  • Where a design represents something particularly new, and is recognised as such by the public, a subsequent similar design will need to be significantly different to avoid a lack of distinctiveness.

The concept of ‘Freedom of the creator of the design to innovate’ derives from the 1991 EC Green Paper The Legal Protection of Industrial Designs. The relevant text is as follows: The second provision endeavours to express a guide-line for the judge in order to cater for the extraordinary variety of cases that the design legislation is going to govern. The provision expresses the principle that, the more limited the freedom of the designer is in developing his design due to technical or marketing constraints (standardization, mechanical or physical constraints, necessity of taking into account deep-rooted marketing requirements by the clients, features imposed by fashion), the more weight has to be given to small differences or variations as constituting an independent development. The judge can expect the “relevant public” in this situation necessarily to give a more careful consideration to the details which make up the difference between two similar products. On the other hand, where the freedom of the designer is unconstrained large and the design represents something substantially new and immediately perceived as such by the relevant public, designs representing quite a wide range of alterations or variations could be considered as infringing, because the strong personal character of the new design inevitably commands an overall impression of a substantial similarity, even if the differences are quite easily noticed.

D09.4.5.2  External factors

The basis of this consideration is that the newness and distinctiveness of a design should not be determined by features which must be present in order for the product to be marketable. Rather, in such circumstances it is appropriate to expect an informed user to assume the presence of those features and give greater consideration to the other features of the design.

Illustrative of situations where this can arise are

  • Features which are inherently present in order for the product to exist as that product.
    For example, a ‘sewing needle’ is inherently a long thin object, and those features will dominate its appearance; as a result it is appropriate to have regard to smaller details of the needle to assess newness and distinctiveness. By way of contrast, there is no inherent shape for a ‘food container’ – and accordingly newness and distinctiveness are assessed by having regard to the overall appearance.  See Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1 where an important consideration was that the product (being a refrigeration compressor) needed to be interchangeable with existing models as a replacement part.
  • Features which are required to be present in order for the product to be lawfully sold or used.
    This particularly relates to requirements arising from government regulation – for example, Health and Safety regulations, building codes, and the like. Where the appearance of a product is dominated by features that are required for compliance with such regulation, it is appropriate to have regard to the smaller details when assessing newness and distinctiveness.
  • Features which are required as a result of industry standardisation.
    In many industries there can be standardisation of products. For example, the basic configurations of the cassettes for video and audio tape recorders are the subject of industry standardisation. Where the appearance of a product is dominated by features that are required as a result of standardisation in the relevant industry, it is appropriate to have regard to the smaller details when assessing newness and distinctiveness.
  • Features dictated by fashion.
    In some industries the marketability of products is strongly dependant upon fashion. That is, while a range of products might satisfy a technical requirement for a product, issues of fashion dictate the presence of certain features if the product is going to be marketable. Where the appearance of a product is dominated by features that are required as a result of fashion, it is appropriate to have regard to the smaller details when assessing newness and distinctiveness.

    When considering this issue, it must be remembered that fashion can be a very subjective issue, and can be very temporal. Also, the fashion expectations may be very dependant upon the particular group of people the product is aimed at. And fashion will often be changed as a result of new products coming on to the market. Accordingly care must be exercised with this particular concept to ensure that it is not devalued to merely being an excuse to imitate a competitor’s product. For the ‘fashion’ criterion to be established, it needs to be demonstrated that the fashion need is such that, without the presence of the relevant features, there would be very little user demand for the product as a result of them being ‘unfashionable’.
  • Features which users ‘demand’ in such products.
    For some products their marketability may be very dependant on deep-rooted user expectations. That is, they will not buy a product unless it has a particular feature – irrespective of the real significance of that feature. Where the appearance of a product is dominated by features that are required because of user expectations, it is appropriate to have regard to the smaller details to assess newness and distinctiveness.

    Note that this situation only arises when the great majority of users expect the particular features to be present, and would be deterred from buying a product that did not have those features.

Importantly, the concept of freedom to innovate is associated with the need for designers to satisfy user requirements of the relevant product. The concept does not provide a lower threshold for distinctiveness merely on the basis of there being many similar competing products. For example, a particular product type might be available in many different designs – and it may be difficult to devise a design that is new and distinctive from the existing products. However this does not constitute a lack of freedom of the creator to design or innovate. Relevant lack of freedom only arises with respect to features that inherently must be present in order for the product to be sold or used.

The effect of the above considerations is to render a design valid in circumstances where otherwise it would fail for lack of newness or distinctiveness. Accordingly when an owner argues newness or distinctiveness on the basis of this issue, they bear the onus of demonstrating a credible basis for concluding the relevant circumstances apply. In many situations this may be relatively easy – in that the circumstance is largely self-evident (e.g. structural considerations). But where the issue involves subjective considerations (e.g. fashion issues, user demands) the owner will need to provide sufficient information for the examiner to be reasonably satisfied of the likelihood that the relevant circumstances apply.

Newness and distinctiveness must be assessed as at the priority date. This fact may be particularly important where a temporal element is involved in any of the above considerations. For example, when assessing whether a feature was dictated by fashion, the question is – what was the fashion requirement at the priority date, and not at the date of examination.

It should also be noted that these requirements are inherently assessed in the context of the Australian market. For example, the pin configuration of a household electric plug is different in Australia (& New Zealand) to the rest of the world – and consequently evidence from a person in another country about requirements for household electric plugs based on plugs in that country is likely to be of little value.

It may be noted that the approach to ‘the degree of freedom of the designer in developing the design’ as expressed in Art 10(2) of the European Community Design is consistent with the above. See Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8, at paragraphs 29 to 31. In particular:

31. …I have no doubt that the “freedom of the designer” referred to is not that of a particular party – it is the degree of choice a designer would have in creating his design, not the particular constraints on a particular party. ….

Similarly in Eredu v Arrmet (OHIM ref: ICD010000024; Apr 27 2004) – referred to in the above case:

16. The degree of freedom of a designer is limited by the fact that stools of the type to which the CD relates necessarily comprise a base, a central column and a seat in order that the stool fulfils its function.

D09.4.5.3  ‘Particularly new’ designs

This component is recognition that when a fundamentally new product design comes onto the market, the uniqueness of the product/design results in users applying greater latitude when associating products with the design. Where the possibilities for variation are large, a competing product that has only small variations from the original design/product may reasonably be seen to be an imitation of the product. Consequently, when assessing newness and distinctiveness, it is appropriate and necessary to require a greater degree of differentiation than would otherwise be the case.

The owner of a particularly new product/design may sometimes seek to maximise the protection of their design by filing similar designs differing only in small detail form the original design. However the owner is in no different a position to anyone else seeking design protection; a subsequent design differing by only small detail will fail for lack of newness or distinctiveness – irrespective of who is the owner of the subsequent design.

D09.4.6 Informed User

D09.4.6.1 Historical Background

Under the 1906 Act, assessment of registrability of a design was to be ‘judged by the eye’.  During examination this was the eye of the examiner but if a registered design became the subject of legal proceedings, the "eye" was that of the court.  The ALRC considered that this subjective test was not transparent and resulted in uncertainty regarding the likely outcome of infringement proceedings.  They recommended that a more objective test be applied and that registrability should be assessed by the standard of an informed user. (Recommendation 34.)

D09.4.6.2  Purpose of the ‘Standard of the Informed User’

The concept of Informed User arises in the context of assessing substantial similarity in overall impression of a design under Section 19 of the Act. This requirement is both a factor in the registrability of the design [by way of s.16(2)] and infringement of a design [section 71(3)]. Consequently the determination of the ‘standard of the informed user’ is likely to be prominent – if not critical – in any debate about distinctiveness.

While the concept of the ‘standard of the informed user’ is defined expressly for the purposes of s.19, it in fact has broader application. For example, when assessing the allowability of an amendment there is always the question of – what is the standard to apply when assessing the disclosure of the design before amendment [s.66(6)(b)], and the effect of the amendment [s.66(6)(a)]? Since such amendments directly affect the s.19 considerations, consistency requires the standard of the informed user be the basis for assessing the allowability of amendments.

It is important to recognise that the ‘standard’ of the informed user describes the standard to be applied, and not who can give evidence. The ‘standard’ is best thought of as being associated with a hypothetical person who is representative of the class of all persons who are informed users – and not a particular real person. This issue is particularly important when assessing declaratory evidence provided to assist in identifying the standard of the informed user. Where the declarant is an aficionado of the particular product, the declarant is clearly an ‘informed user’ – but their views may not represent those of the typical informed user. Similarly a declarant may be able to demonstrate that they are an ‘informed user’, but their knowledge of the product is less than the typical informed user – in which case their views also may not represent the standard of the informed user.

As a practical matter, it may be observed that a design owner, faced with a citation, may naturally engage a declarant who will emphasise the significance of differences between the design and the citation. Conversely a third party may naturally seek to engage a declarant who will de-emphasise the differences between the design and the citation. [These approaches would be reversed if the design owner is trying to establish infringement, and the alleged infringer is trying to establish non-infringement.]

When assessing the weight to accord a declaration, a relevant consideration is whether the views of the declarant are indicative of a typical ‘informed user’. That is, the examiner needs to consider the basis for accepting that any particular assertion relates to the ‘standard’ of the informed user, rather than the views of an aficionado or a ‘barely informed’ informed user.

It is important to note that the prior art base [s.15(2)] distinguishes between documentary publication (world-wide) and publication by use (limited to use in Australia). Similarly, use must occur within Australia for there to be infringement of a Design under s.71(d). The labelling of the person defined in s.19(4) as an ‘informed user’ inherently limits that person to knowledge within Australia. Consequently declaratory evidence relating to the ‘standard of the informed user’ must relate to familiarity in Australia. While there is no barrier to persons from other countries providing evidence regarding the ‘standard of the informed user’, that evidence may have little weight if it fails to relate the declarant’s experiences in their own country to familiarity in Australia.

For a product that is well used in another country, but has no market penetration in Australia, evidence from an expert from that foreign country is of little assistance. Where a product is well known in Australia, but has little market penetration outside of Australia, evidence from an expert from that foreign country is equally of little assistance. That is, familiarity with the particular product in the declarant’s home country is irrelevant – for both high and low familiarity. What matters is familiarity in Australia.

For a range of products there are fundamental differences in the product between Australia and other countries. For example, toilet bowls in Australia compared to North America; power outlet connections in Australia & New Zealand compared to the rest of the world. Clearly an expert from another country relating their experiences in that country in respect of such generic products is of little relevance.


* evidence of what informed users (in Australia) are familiar with from other countries may be of relevance; and

* evidence from a foreign declarant may be relevant if it is related to what is familiar in Australia.

D09.4.6.3  The Standard of the Informed User

Subsection 19(4) defines the standard of the informed user as:

The standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates.

In construing this definition, the question of the degree of familiarity required by the standard arises. For this purpose it is appropriate to refer to the relevant ALRC recommendation (#46) and the Government response. [S.15AB Acts Interpretation Act.]

The concept of informed user is intended to be flexible enough to incorporate where relevant the views of consumers, experts, specialists and skilled tradespersons. Importantly, it does not require that any one of these categories of people must be part of the test in all cases. Rather the person is someone who is reasonably familiar with the nature, appearance and use of the products of the relevant kind. A particular issue is the status of people located intermediate in the path from the product manufacturer to the ultimate end user. Where such a person is responsible for the ‘practical’ use of the product [such as a motor mechanic charged with replacing a worn-out part] they are the effective users of the product – not the car owner. In contrast, a person whose responsibility is to select items to be stocked for sale [such as a whole-sale buyer in a department store] is not a ‘user’ of the product. However their role in purchasing goods users will want to buy might lead them to be in a position to give evidence about the standard that would be applied by users.

In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 the relevant product was ladies garments. It was stated:

  • ​​​​​​​In the present context, women as a class are the ordinary users of ladies’ garments, but not all women have the requisite degree of familiarity to be described as informed users. Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged

An expert or specialist in designs per se is not necessarily an informed user. The ALRC report expressly states that distinctiveness should be determined by users of the design rather than design experts – and this is expressed by the standard of the ‘informed user’.  An expert or specialist in designing products is not thereby an expert or specialist in the use of such products. Rather, the status of expert or specialist arises from knowledge of the use of the product (including similar products).

These principles were summarised in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 at para 59 as:

Although it would be dangerous to attempt some comprehensive statement of principles that might be applied to the concept, it is apparent that an informed user:

  1. is reasonably informed; not an expert but more informed than an average consumer;
  2. is an objective standard. However, expert evidence may still be adduced in court to assist the Court in applying the informed user concept;
  3. focuses on visual features and is not concerned with internal features or features that are not visible to the naked eye.

The person is not assumed to have any knowledge of the particular product or article to which the design is applied. Rather the standard is that of a hypothetical person familiar with products the same as, or similar to, those to which the design relates.

The standard requires the person be familiar with the product to which the design relates. Thus what matters is the impression observed by a person familiar with the products. An impression that might be made by an impulse buyer, or someone who is unfamiliar with products to which the design relates, is not definitive of the standard. Similarly, the impression observed by an aficionado is also not definitive of the standard.

In Woodhouse UK v Architectural Lighting Systems [2006] RPC 1, (cited with approval in Proctor & Gamble v Reckitt Benckiser (UK) [2008] FSR 8) the characteristic of an informed user (in the context of the European legislation) was described as follows:

  • First, this notional person must obviously be a user of articles of the sort which is the subject of the registered design – and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of “the man in the street”. “Informed” to my mind adds the notion of familiarity with the relevant rather more than what one might expect of the average consumer; It imports the notion of “what’s about in the market?” and “what has been about in the recent past?” I do not think it requires an archival mind (or eye) or more than average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things. … Therefore the focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any).

It may be noted that this is consistent with the discussion of informed user in the ALRC report.

The identification of the informed user can have a major effect on the assessment of distinctiveness. 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 meters above a road. The courts assessed the designs on the basis that the informed user was ‘a regular member of an urban development team who is primarily interested in the appearance of street furniture….’ – that is, with the appearance of the lamp as viewed from a distance. This meant that differences that were only apparent when viewed at close range (such as at the point of sale) were discounted because they were not visible in the operational environment relevant to the informed user.

Note: This illustrates the importance of the informed user when assessing the distinctiveness of a design. If the design related to the shape of a clip used to hold the cover of the street lamp in place, the informed user would most likely be a maintenance person viewing the lamp head from close range.  

Note: Care is required when referring to UK or European decisions concerning the Informed User. In particular, while there may be significant commonality in what constitutes an ‘informed user’, the task required of the informed user is quite different. Under the European legislation, the relevant test is:

  • A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public…..

That is, ‘individual character’ arises if the overall impression is different from the prior art [note that the test is not ‘clearly different’ - see Proctor & Gamble v Reckitt Benckiser (UK) [2008] FSR 8, at para 35.]. That is, the test is focussed on differences. In contrast, the Australian legislation applies a test of ‘substantially similar in overall impression’ [s.16(2)] and requires the person making the decision to ‘give more weight to similarities between the designs than to differences between them’ [s.19(1)]. That is, the Australian legislation requires greater differentiation than that required by the European legislation.

Additionally, UK and European decisions differ from Australia legislation regarding the requirement that the informed user be a user of the product.

The Multisteps decision - Multisteps Pty Ltd v Source & Sell Pty Ltd [2013] FCA 743 supports the concept of the informed user being one familiar with the product bearing the design, and is consistent with s.19(4), ALRC report and subsequent Government response. This decision distinguishes itself from previous European and UK decisions when considering the standard of the informed user. The Multisteps decision does not follow European and UK approach which requires a user requirement for the informed user. Instead, the standard only requires sufficient familiarity of the product when assessing the type of person or persons who should be considered an informed user.

In the Multisteps decision, Justice Yates indicated that the standard of the informed user does not require the notional person or persons to be a user, although the appropriate consideration of familiarity can be gained through use. The user might be a range of different people who have gained familiarity to the product in different ways. His honour stated (at 70) that the “necessary and only qualification is that the person be familiar with produce or similar containers…[and] he or she will have an awareness and appreciation on the visual features of the produce container that serve its functional as well as aesthetic purposes”.

His Honour also indicated (at 67):

“Importantly, however, s 19(4) does not impose a standard higher than familiarity.  The standard fixes the appropriate level of generality (or particularity) at which a design is to be assessed: see the discussion in Rolawn at [112].  This may be a reason for saying that the notional person is not a design expert, lest it be thought that a standard of design evaluation more rigorous or exacting than familiarity is involved. However, in my view, it is not a reason for excluding, necessarily, a design expert from being a person having the required familiarity” (emphasis added).

When the product is identified in association with a particular purpose or use (for example, a container for water) the relevant informed user would be a person familiar with that product and its asserted purpose or use. The extent which products used for different purposes or uses can be considered against distinctiveness depends on whether an informed user would consider such a product to be a similar product to the product to which the design relates.  [s.19(4)]. [See also D04.3.1]  The informed user standard does not determine whether a document is part of the prior art base, or can be considered for distinctiveness. Rather the informed user standard sets the standard to be applied when assessing whether a design is substantially similar in overall impression to another design. That is, it sets the environment for interpreting a design. In Reckitt Benckiser Inc [2008] ADO 1 the critical publication was an annual report of the owner published in England about a week prior to the priority date of the designs. The owner argued that the cited prior art should be excluded from consideration because an informed user (being a person in Australia) would not have been aware of the relevant publication before the priority date. In rejecting this submission the delegate stated (at paragraph 28):

… the informed user standard sets the standard to apply when comparing the design with an item of prior art. It requires the tests of s.19 to be applied from the perspective of an informed user – as distinct from someone who knows nothing about the relevant products, or from someone that is an aficionado of such products. 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.

Conversely, while an informed user will undoubtedly have knowledge of a range of designs, the informed user standard does not entail any express inclusion of such other designs into the consideration of distinctiveness. In particular, an approach like:

the difference between the design and the citation is X. I know that X is commonly used in similar designs, and therefore the design is not substantially similar in overall impression having regard to the citation in combination with X.

is an invalid approach. The question is a more objective one of – having regard to my knowledge of the range of similar products and designs, is the present design substantially similar in overall impression to the cited design.

See also LED Technologies v Elecspess [2008] FCA 1941 at para 12, where it is stated:

  • … 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.​​​​​​​

While not expressly stated in the legislation, the informed user standard is inherently the standard as it existed at the priority date of the design. If this were not the case the assessment of the distinctiveness of a design would become dependant upon its subsequent commercial success. As a result, when determining the informed user standard the examiner needs to exclude from consideration any developments that have occurred subsequent to the priority date. Likewise when assessing evidence provided by the owner – developments that occurred subsequent to the priority date are not material to establishing the informed user standard.

Apple Computer Inc [2007] ADO 5, concerned the number of electrical contacts inside a USB connector for a computer. The delegate concluded that at the priority date users of USB connectors never looked inside to see the contact layout. The delegate noted:

I should further emphasize that the standard of the informed user must be applied as at the priority date. [s.15(1)]. If this USB connector became commonplace, it might well be the case that informed users would change their habits in certain environments such that they would look inside a USB connector to assess whether it was a standard four-contact connector, or the ‘enhanced’ nine-contact connector. But at the priority date of the design the USB Type-A connector was, to the best of my knowledge, only available in the standard 4-contact version. And with that connector there was never any reason for the user to look inside the connector and notice the contact configuration.

The issue of whether the informed user can be a child is particularly relevant for toys, and for children’s clothing. The following propositions would seem appropriate:

  • Where the design is in respect of a product which is intended to be bought by children (for example, with pocket money), the informed user would be such children;
  • Where the product is usually bought by an adult (for reasons of cost or the like), but the decision to purchase is strongly influenced by the expectations of the child it is bought for – the informed user would be such children;
  • Where the product is usually bought for a child, with the attitudes of the child to the product being of little consideration (for example: the child is an infant; or the product is bought to meet developmental requirements) the child would not be the informed user.

In Ferrari S.P.A v Dansk Supermarket A/S R0084/2007-2, 25 January 2008 the informed user for a design for a ‘toy car” was a child. However in Aktiebolaget Design Rubens v Backlund, ICD 461 no indication was given about whether the informed user is (for example) the purchaser of the doll (presumably an adult), or the user (presumably a child)

It may be noted that the wording of s.19(4) defines the informed user standard in relation to a person. Consequently where a design is in relation to a product used by an animal, the informed user cannot be that animal.

In Mars UK Limited v Paragon Products BV, Case R1391/2006-3, 25 January 2008, the informed user for a dog chew product was held to be “a dog owner’.

D09.4.6.4  Assessing declaratory evidence to establish the standard of the informed user

When declarations are filed to establish the standard of the informed user, they must necessarily be assessed in the context of the particular case. However the following questions may assist with deciding the weight to be attached to assertions made in the declaration:

  • How does the declaration indicate the relevance of the declarant to establishing the standard of the informed user?
  • Is the declarant a user, as distinct from a manufacturer/supplier/designer?  
  • On what basis can the declarant be said to be a ‘user’ of the product?
  • Is the declarant’s use typical of all users, or merely of a small subset of users (such as aficionados)?
  • What is the basis for accepting any assertions as relating to the typical informed user, rather than the particular views of the declarant?
  • If the declarant lives in another country, what is the basis for accepting their views as relating to the informed user standard in Australia?
  • If assertions appear to lack inherent credibility, how does the declarant justify those assertions?

It should be noted that a declaration does not constitute ‘proof’ of anything stated therein. In a legal sense, it is merely evidence. Consequently, while it will usually be appropriate to accept declaratory evidence at face value – this is not obligatory.  For example, in Apple Computer Inc [2007] ADO 5 the design related to the internal pin configuration of a USB connector for a computer. A declaration to establish the informed user standard was provided by the IT manager of the attorney firm representing the owner. The delegate stated:

The USB port is clearly intended for use by the ‘ordinary’ computer user; it is not a port intended to be used primarily by IT experts. In my view the relevant informed user for the present design is a person who has general familiarity with computers, and is comfortable with purchasing and attaching USB-based peripheral devices to achieve the use they desire of their computing system. It is not the person who has acquired a computer but is uncomfortable with buying or attaching peripheral devices such as cameras and game boards. And it is not the IT expert who is familiar with all the intricacies of a computing system. Accordingly while it is apparent that Mr Boorman is likely to be a person who is very knowledgeable about computers, in my view he is not representative of the informed user standard. And there is nothing in his declaration to indicate that his comments are otherwise reflective of the informed user standard (as distinct from his own specialist-based views). Accordingly I consider the views Mr Boorman has expressed about the informed user standard are to be accorded low weight.

The delegate went on to express his views about how users connect USB plugs, and concluded that the informed user of a USB connector would not look inside the connector and notice the contact layout – and therefore the design lacked distinctiveness over a usual USB connector. The delegate went on to state:

In coming to these conclusions, I am very conscious that I do not have before me any declaratory evidence from people who fall into the category of informed user for this product. However I am obligated to assess the design by applying the standard of an informed user. In that regard the Registrar:

... is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory ..., he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VLR 187 at 197, Kalil v Bray [1977] 1 NSWLR 256 at 261, R v Industrial Appeals Court; ex parte Maher [1978] VR 126 at 142, Rodriguez v Telstra Corporation Ltd (2002) 66 ALD 579 at 585, Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the {Commissioner} based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.

The Apple Computer decision was referred to with approval in LED Technologies v Elecspress Pty Ltd [2008] FCA 1941 at para 58. [It is also referred to in Review No 2 v Redberry Enterprises [2008] FCA 1588 at para 25 and following, but the comments there made would appear to be in response to submissions about the Apple case made at the hearing – rather than the case itself.]

It may be noted that situations where an examiner would substitute their view on the standard of the informed user in contradiction to evidence supplied by the owner, are unusual. In the ex parte environment of examination, two particular situations can arise in practice:

  1. The declaration makes relevant assertions, but the material provided in the declaration is insufficient for the examiner to accept those assertions as indicating the standard of the informed user, as distinct from the standard or personal views of the declarant. In such situations it would be appropriate to request further material in support of the relevant assertions so that the examiner can be reasonably convinced of the correctness of the assertions being made.
  2. The examiner positively disagrees with the assertions being made by the declarant. For the examiner to come to this conclusion, they must have a clear basis to make the contrary assertion. If the basis is merely the examiner’s own belief, an objection cannot be maintained – there must be some evidentiary basis for disregarding the assertions of the declarant. Any report based on such disagreement must be referred to the Deputy Registrar before it is issued.

This issue is discussed further under Being ‘satisfied’ – see D03.9.