When considering newness and distinctiveness, we need to understand the nature of the product as a ‘thing’. It is important to recognise that the Locarno classification primarily classifies product designs on the basis of purpose rather than appearance or structure. Therefore the owner will usually identify the product based on what its purpose is, and not by visual qualities that the thing (object) has.

Example

A plastic milk crate can also be used as a stool, a step ladder, a book case, a container, a motorcycle carrier rack etc. The Locarno classification will depend on what the design application identifies as its purpose, by way of the product name. However, an identical thing is not different just because it has a different identified function.

Consequently, in searching the prior art base the examiner needs to bear in mind that the same thing with the same or a similar design might have a different purpose and product name. If the design under examination is called a stool but looks like a milk crate, the examiner should consider also searching for milk crates.

When assessing the newness of a design, a thing used for one purpose is not distinguished from the same thing used for a different purpose. It is still the identical thing.

When assessing whether a design is distinctive, the product name and intended use may be relevant. Sometimes the product name will include some sort of statement of intended use – e.g. ‘A container for xxxx’. This can be helpful in identifying the familiar person / informed user standard and the ‘similar products’ that can be considered under s 19(4). The familiar person / informed user standard would generally include people who have direct knowledge of the product and its intended use.

Subject-matter issues

Examination is strictly limited to the issues of newness and distinctiveness. Any subject matter issues should have been dealt with as part of the formalities test (see Microsoft Corporation [2008] ADO 2) and should not normally arise in examination.

Despite this, it is possible for a design being examined to lack subject matter. This is most likely to occur if the ‘design’ is for visual features that are not applied to a product.

The requirements of newness and distinctiveness (ss 15 and 16) apply to designs, not to alleged designs. If the subject matter of a design does not involve a product with visual features (see the definition of design in s 5), it cannot meet the newness and distinctiveness requirements.

In such cases the examiner will object that the design is inherently not new and not distinctive because it is not a design in accordance with the Act, and will set out the reasons why we cannot consider it a design.

The owner may respond that the subject matter of the design has a Locarno classification and therefore meets the requirements of the Act. However, the ability to classify in Locarno is not a test for whether the design is for a product bearing visual features (see Microsoft Corporation [2008] ADO 2 at para 15).