13.7. Assessing newness and distinctiveness: How the design is displayed

Environment

When assessing whether a design is distinctive, the significance of a visual feature or features as part of the overall impression of a design might depend on whether the product is viewed in the environment in which it is normally used or in a sales environment. How people will normally view a product can be important in understanding its overall appearance and determining similarity.

Example 1

In Woodhouse UK v Architectural Lighting Systems [2006] RPC 1, the design related to street lanterns that were typically positioned about 8 to 10 metres above a road. The evidence showed that the lanterns were sold using physical specimens displayed on a table, with lighting engineers present. The court determined that the informed user was ‘a regular member of an urban development team who is primarily interested in the appearance of street furniture’. It concluded (para 52):

… this process of customer persuasion as a result of close inspection is not the proper situs for the relevant comparison to be made by the ‘informed user’. In addition to a table inspection, the informed user must have in his mind’s eye the visual impact of the lantern in situ – during the daytime moreover and from a little distance from the base of the pole upon which the ensemble is suspended.

That is, while a comparison of products at close range outside their normal setting may identify similarities and differences, the significance of those features must be assessed in the environment relevant to the informed user. In the case of the street light where the design related to the overall external appearance of the lamp, the relevant informed user was concerned about the appearance of the lamp in the streetscape, and the appropriate viewing distance was from ground level.

However, for a component part of such a lamp (e.g. the light socket inside it), the familiar person or informed user might be the lighting engineer and the relevant viewing distance might be the close-up view one would have when maintaining the lamp.

Example 2

The decision in Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796, focused on the similarities between the lower hubs of 2 ceiling fan designs, stating (at 67):

… it is the lower hub to which the eye is likely to be drawn when an apparatus made to the design is installed in a ceiling as part of a complete ceiling fan and it is the base of the lower hub that will contribute most to the overall appearance …

Hidden perspectives

Often a citation does not display the product from all perspectives. This can lead to a situation where the design being examined is substantially similar in overall impression compared to all available views of the citation but there is a question as to whether it would be substantially similar if compared to the hidden view(s) of the citation.

Example 1

This situation arose in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114 (‘Tempo’). In this decision the citation showed the product in front perspective view only. However, the judge was prepared to infer the impression that would be gained from the side of the product.

Based on the judgement in this decision, useful considerations for inferring the impression from hidden perspectives include:

• the expected or actual symmetry of the product
• how the available views of the product limit the possible characteristics of the ‘hidden’ side
• the appearance that would normally be expected of such products
• types of features to be expected on the ‘hidden’ side – there is no basis to infer the existence of an unusual visual feature on that side.
  ​​​​​

Example 2

More recently this issue was considered in Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.

In this decision the cited art did not include representations showing all angles of the product bearing the design. As such, the overall impression was inferred during examination, taking into account hidden perspectives. It was argued that it was not appropriate to infer the overall impression, as the particular circumstances of this case differed from the ‘Tempo’ criteria, reproduced in the four dot points above.

The decision however makes the point that the ‘Tempo’ criteria should not be considered a definitive set of prerequisites (to consider hidden perspectives).  What also should be taken into account is whether a reasonable assessment of the hidden views can be made utilising the angle(s) supplied as part of the representation(s).

Internal features

Internal features (such as internal shape) of the product are relevant to the assessment of distinctiveness if they are part of the overall impression formed (s 19(1)) by the familiar person or informed user (s 19(4)). For example, internal features contribute to the overall impression where:

• the product is one which in normal use is ‘opened’ so that internal features become visible (see Gramophone Company Limited v Magazine Holder Company (1910) 27 RPC 152, where internal features of a gramophone player were visible when the lid was raised)
• the internal features of the product become apparent in normal use (see Ferrero’s Design [1978] RPC 473, in which the internal appearance of a confectionary egg became visible when the egg was broken for consumption).

However, where the internal appearance is not apparent during normal use (e.g. the internal construction of a sealed lead-acid battery) it cannot contribute to the overall impression formed by the familiar person / informed user, so it cannot be a factor in distinctiveness.

‘Mosaicing’

The comparison to determine distinctiveness is against individual items of prior art. It is impermissible to combine items of prior art to conclude that the design is not distinctive. This error is referred to as mosaicing. See the decision in LED Technologies v Elecspess [2008] FCA 1941, which stated (at 12):

… 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.