14.5. Section 19 requirements for distinctiveness: Amount, quality and importance

Section 19(2)(c) instructs:

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 allows for an overall assessment that the design is substantially similar in overall impression to another, even though part of the product may not be substantially similar.

In cases like this, examiners need to assess the relevant visual features on the basis of their importance to the design, bearing in mind the purpose and operation of the product. This is a qualitative rather than quantitative assessment, balancing the similarities and differences while taking into account:

• the total impression

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• which features would stand out to a familiar person / informed user.​​​​​​​​​​​​​​​​​​​​​​​​​​​​

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If there are visual features of the design that are not in the citation, or vice versa, we must consider how significant their absence is.

If the visual differences have little impact on the overall impression of the design and the citation, this difference is unlikely to result in the design being considered distinctive. The examiner needs to have a holistic understanding of the designs being compared, assessing both the importance of the visual features in common and what impact any differences may have, for the familiar person / informed user standard.

This was one of the main considerations in Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796, which was about infringement of a ceiling fan design. There were differences between the designs, but the similarities were in an area of significance from the point of view of an informed user. The lower parts of the ceiling fans, where users would see them in operation, were similarly proportioned and made a similar visual impression. The judge 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. ​​​​​​​