13.8. Assessing newness and distinctiveness: Other visual features

Products typically have features in addition to those represented as visual features in a design. For example:

• A design may be for the shape of a bottle, but the bottle as sold will typically have a label that adds visual features to those shown in the representations of the bottle.
• A design can be represented in a black and white line drawing but the actual product will inevitably have colour, which is a visual feature.

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Additional features in citations

As discussed in the following examples, examiners may need to determine the significance of additional visual features in citations.

Example 1

The designs in Reckitt Benckiser Inc [2008] ADO 1 were for containers bearing a label with a clear central circular area without markings, with radiating bands extending to near the edge of the label. The prior art designs showed containers of the same type and colour and with the same pattern on the label. However, the label in the citations contained additional text in large, prominent lettering. The owner argued that the designs were distinctive because they did not contain the lettering that was in the citations.

The delegate reviewed the definition of a design and noted that the dictionary definition:

… invokes a causative relationship between the appearance and visual features. Significantly, that causative relationship is not tied to ‘the visual features of the product’, but to ‘one or more’ visual features of the product. That is, as a general proposition a design is constituted by some only of all visual features present in the product.

The delegate concluded:

In my view the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.

In other words, the fact that there were extra visual features in the citation did not remove the overall impression that the 2 designs were substantially similar.

Example 2

The design in Reckitt Benckiser (UK) Ltd [2008] ADO 6 was for a pharmaceutical tablet of a certain shape and colour. The citations were identified as ecstasy tablets. One of these tablets had an impression of a duck on one side that was not seen in the registered design. The delegate stated:

All the features of the present design are admittedly present in this citation. Furthermore, an informed user would have awareness that pharmaceutical tablets frequently contain indentations on one or both faces – such as a line for cutting a tablet in half, dosage indications, or the range of markings that are apparently present on tablets like the cited ecstasy tablets. Consequently, in the absence of anything in the present design to indicate that the design is to the exclusion of, or incompatible with the presence of, additional visual features on the face of the tablet (in particular, indentations), the informed user would readily conclude that the present design is present in the tablet of the citation – and therefore is not distinctive over that citation.

Colour

The effect of colour when assessing distinctiveness varies from case to case. Depending on the circumstances, a difference in colour between 2 objects that are otherwise very similar can sometimes be enough to establish distinctiveness. In particular, it depends on whether the familiar person / informed user would see colour as a significant feature of the overall impression of the product.

Example

Review 2 v Redberry Enterprises [2008] FCR 1588 was about a claim of infringement of a clothing design. An important consideration was that the representations of the design in the application for registration were in colour. The judge commented:

[The] weight … to be given to pattern and colour will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user, having regard to the prior art, and the freedom of the designer to innovate.

The relevant art supported a claim that an informed user would consider colour as a significant visual design element. The judge also considered that the use of colour in the representations indicated that colour was an important design component. The court found that there was no infringement, partly because of the colour differences between the clothing designs.