13.3. Assessing newness and distinctiveness: Identifying the product

In some cases the examiner will need to think about what the product actually is – i.e. what the relevant overall impression is of.

Common designs

When an examiner is assessing the newness and distinctiveness of a common design registration, they consider the products that the common design feature is applied to. For example, if the common design is for a pattern applied to shoes, a wallet and a handbag, the examination search should consider shoes, wallets and handbags, in addition to the key visual features of the (common) design.

If the design is found to be not new or distinctive as applied to one of the products, this ground for revocation applies to all of the products in the common design registration – even if the citation is not relevant to all of the products.

If this happens the owner may be able to amend the registration to overcome the citation. For example, if the cited design applies to a pair of shoes, the registration could be amended to remove the common design applied to this product. The common design applied to the remaining products would be new and distinctive compared to the prior art base, overcoming the ground for revocation.

Kits

When we assess the newness and distinctiveness of a product that is a kit, it is important to remember that the registration is for the appearance of the assembled kit. Whilst the registration may show how the assembled kit of items form together, a kit does not equate to the collection of different items.

Where items that form the registered kit design are individually found in the prior art base, they should not be considered in combination as part of determining newness and distinctiveness (see ‘Mosaicing’ in How the design is displayed). However, where items found in the prior art base assemble to make the relevant product, and this assembly is demonstrated (e.g. by instructions or marketing material) this may be citeable prior art.

Indefinite dimensions

To assess the newness and distinctiveness of a product, we normally examine the appearance of the product as a whole. However, if a product has indefinite dimensions, its appearance as a whole may not be relevant to that assessment.

Example

A design for a pattern that repeats itself (i.e. has indefinite dimensions) is not new compared to a single representation of the identical pattern.

Complex products

A manufacturer might make a complex product using components supplied by other manufacturers. Those components are products in their own right if they are sold separately. When we assess the newness or distinctiveness of a complex product, the newness or distinctiveness of any of its component parts is irrelevant.

Example

A complex product that we find to be new and distinctive is held together with screws. These screws are a component part of the product. However, they are very ordinary as screws. They are not new or distinctive just because they are a component part of a complex product that is new and distinctive.

When component parts of a complex product appear in the prior art base in isolation, this should not automatically lead to a finding of substantial similarity. The overall impression needs to be taken into account, including the other visual features of the complex product.