14.2. Section 19 requirements for distinctiveness: Similarities and differences

Date Published

Section 19(1) requires us to ‘give more weight to similarities between the designs than to differences between them’.

This involves a subjective consideration. It is not assessed in some mathematical way, such as by counting similarities and differences.

Ultimately the test is whether the design is substantially similar in overall impression. Statements that simply point out differences in detail are generally not persuasive – they must establish that the different features substantially affect the overall impression. See Manitowoc Foodservice Companies LLC [2013] ADO 2, where the visual differences were considered minor and without the functional value or advantage that would make an informed user pay particular attention to them.

Conversely, a single difference can be enough to establish distinctiveness. If a familiar person / informed user would consider the different feature to be a particularly important one in forming the overall impression, this would outweigh both the number of similarities and the instruction to give more weight to similarities. For example, in Astra Zeneca AB [2007] ADO 4, a relatively small visual feature (an indicator of how many puffs remaining in an inhalation device) was assessed as having significant prominence to an informed user on the basis of its functional relevance. In Sportservice Pty Ltd [2007] ADO 6, a relatively small visual feature (a collar section of a bicycle transport rack) was found to have greater prominence in the actual product than was apparent from the representations (with the representations fairly representing the actual product). (See also Icon Plastics Pty Ltd [2007] ADO 2 and Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.)​​​​​​​​​​​​​​

There will be situations where a citation does not explicitly show all the visual features of a design. For example, the citation might show an image of a product from just one angle. In this situation the examiner needs to consider whether the impression obtained from the particular viewing angle allow for a reasonable assessment not only of the visible angle, but also other angles. A factor relevant to whether such an assessment can be reasonably made is whether there is relevant symmetry in such products – such that the visible features can be said to fairly represent the hidden features. See World of Technologies v Tempo [2007] FCA 114 at 61.

Amended Reasons

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