14.6. Section 19 requirements for distinctiveness: Freedom of the creator of the design to innovate

The concept of ‘freedom of the creator of the design to innovate’ (s 19(2)(d)) modifies the basic rule for assessing newness and distinctiveness in 2 ways:

• If the overall appearance is partly determined 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.

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• ​​​​​​​​​​​​​​​​​​​If a design is 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 to innovate comes from the 1991 European Commission Green Paper on the Legal Protection of Industrial Design, which states:

5.5.8.3. … 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.

5.5.8.4. 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.

External factors

The basis of this consideration is that distinctiveness should not be determined by features that must be present in order for the product to be marketable. Instead, we can expect a familiar person / informed user to assume the presence of those features and give more weight to the other features of the design. Features that a designer may have no control over include:

• Features required 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. Any newness and distinctiveness will therefore be in smaller details of the needle. In Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1, an important consideration was that the product (a refrigeration compressor) had to be interchangeable with existing models as a replacement part. The judgement in Colgate-Palmolive Company [2011] ADO 1 noted that an inherent physical feature of a toothbrush is that its head must ‘ultimately be shaped to easily brush the tops and sides of the teeth within the confines of the mouth’.

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• Features required for the product to be lawfully sold or used.
  This particularly relates to requirements arising from government regulation, such as building codes. See, for example, White Motor Corporation (Australia) Pty Ltd v McConnell Seats Australia Pty Ltd [2018] ADO 1), concerning the design of bus seats.

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• Features required as a result of industry standardisation.
  For example, in Manitowoc Foodservice Companies LLC [2012] ADO 3, ice machines were considered to have industry-wide uniformities in terms of shape and configuration.

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• Features dictated by fashion.
  In some industries, fashion dictates the presence of certain features if the product is to be marketable. Note: fashion can be very subjective, very quick to change and very specific to the particular group of people the product is aimed at. Accordingly we should be careful to ensure that fashion does not become an excuse to imitate a competitor’s product. For the ‘dictated by fashion’ criterion to apply, it needs to be clear that without the presence of the relevant features there would be very little user demand for the product because it would be unfashionable.

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• Features that users demand in such products.
  The marketability of some products can be very dependent on deep-rooted user expectations – i.e. they will not buy the product unless it has a particular feature, regardless of the real significance of that feature. Note: this is only relevant if the great majority of users would be deterred from buying a product that did not have the expected feature.​​​​​​​

The concept of freedom to innovate does not provide a lower threshold for distinctiveness. For example, a particular product type might be available in many different designs and it may be difficult to devise a design that is substantially different from the existing and competing products. However this does not constitute a lack of freedom of the designer to innovate.

When an owner argues newness or distinctiveness on the basis of lack of freedom to innovate, the onus is on them to satisfy the examiner that this consideration applies.

The fact that newness and distinctiveness must be assessed as at the priority date can be particularly important when considering external factors. For example, when assessing whether a feature was dictated by fashion, the relevant question is what the fashion requirement was on the priority date, not on the date of examination.

These requirements must also be assessed in the context of the Australian market. For example, evidence about the configuration of household electric plugs based on plugs in another country is unlikely to be relevant.

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‘Particularly new’ designs

When a fundamentally new product design comes on to the market, a competing product that is only slightly different in appearance from the new and original product design is more likely to be seen as an imitation. When assessing newness and distinctiveness of competing designs in this situation, we require a greater degree of differentiation than would otherwise be the case.

Sometimes the owner of a particularly new product design will try to maximise the protection of their design by filing subsequent designs that differ only in small details from the original design. However, as with any other design that is substantially similar to an existing one, these designs will not pass the test of distinctiveness.