D10.5 Allowability - increasing scope of the Design Registration

Date Published

Amendments under s 66 of the Designs Act 2003 (Cth) have the additional requirement that they ‘must not be such as to… …increase the scope of the design registration’. This is to be understood in the context of amendments under s 66 being limited to addressing issues of newness, distinctiveness, and the s 43 matters.[See s 65(2)].

The concept of ‘increase the scope of the registration’ has only one meaningful measure - that is,

'would the amendment make anything an infringement which would not have been an infringement before the amendment?'

This is the so-called ‘Distillers Test’ [The Distillers Co. Ld.'s Application (1953) 70 RPC 221 at 223], and assesses scope by considering the effect on third parties (the public).

This issue was applicable in Invacare Corporation [2013] ADO 4. After grounds for revocation were raised, the owner requested the product name be amended (from “Wheelchair chassis” to “Front frame of wheelchair chassis”). The owner did not provide any legislative basis (under s 66) for this request to be allowable. The Hearing Officer considered the representations to show a wheelchair chassis, and not identify a front frame. The request was deemed impermissible (under s 66(6)(a)), on the basis that the reference to the front frame sought to increase the scope of the registration by referring to a feature not seen in the representations. The amendment, if made, would potentially make a front frame an infringement (which would not have been the case before the amendment, considering the representations).

Section 66(6) superficially invites a ‘numerical’ comparison of the scope of the respective designs. On such a basis, it might be argued that an amendment has the effect of replacing an entire design with a different design is allowable – on the basis that the scope of the design has not increased – it is merely different and less. However, the concept of ‘scope’ does not admit of a mathematical equivalence that would allow such a comparison. It may also be observed that such an interpretation would not reflect the underlying intention of the Act, which is to provide certainty on the monopoly right as from the date of registration.

The test is a notional test. It is not necessary to identify specific known things that would become an infringement. Rather it is sufficient if you can hypothesise a product that would not infringe pre-amendment, but would infringe post-amendment.

In applying this test, it is important to recognise that the Designs Act 2003 expressly relates the criteria for infringement to that of distinctiveness – see s 71(9). Distinctiveness is based on an assessment of overall impression as per s 16(2). It follows that any amendment that does not affect the overall impression of the design cannot change what constitutes an infringement. Consequently, the criterion to be applied is:

  • does the amendment result in any change to the overall impression of the design; and
  • if there is a change in overall impression, does that change make something an infringement that would have not been an infringement before the amendment?

Amendments that do not change the overall impression are allowable under this criterion. For example:

  • An amendment to the generic features of a product that does not affect the scope of the product relating to the design, nor affect the overall appearance of the product that arises as the result of the visual features, would be allowable.
  • An amendment to change a feature shown as a feature of the product, to a visual feature of the design, would be allowable (assuming the scope of the product was not expanded as a result).
  • Amendments of the representations to change how the design is represented – without changing the detail of the design. For example, replacing plan views with isometric views (or vice versa).

If an amendment would change the overall impression of the design, it will usually be the case that the amendment will result in something that was not an infringement becoming an infringement as a result of the amendment. However, there are a small number of situations where the overall impression may change, but the scope of the design has not increased. For example:

  • An amendment that limits the products to which the design relates to a subset of the former products.

Where a design relates to a common design, an amendment to delete one of the designs will likely decrease the scope of the design, and be allowable. However, the actual effect of the amendment will need to be carefully considered having regard to the facts of the case.

Where the design relates to a complex product, with the registration being in respect of an element of the complex product, it would be expected that an amendment to make the design in respect of the whole product would be allowable under s 66(6)(a) – although the facts would have to be carefully considered. However, an amendment to change a design for a complex product to a design for an element of that complex product would not be allowable under most (if not all) circumstances.