14.3. Section 19 requirements for distinctiveness: State of development of the prior art base

Date Published

There are 2 aspects to this requirement:​​​​​​

​1. If the prior art base is well developed (i.e. there are a lot of existing designs), we can expect familiar persons / informed users to be more aware of small differences between competing designs. If the prior art base is less developed, differences will probably need to be larger for competing designs to be considered distinctive.

​​​​​​​​​2. When assessing infringement, it is relevant to compare the extent of difference between the design and the alleged infringing product, and between the design and the prior art. A finding of infringement is likely if the alleged infringing product differs from the design less than the design differs from the prior art. In other words, if the alleged infringing product is closer in appearance to the registered design than to the prior art designs, a finding of infringement is likely. This is known as the ‘rule of thumb’ test.

​​​​​​​​​​​​​​Where there is a well-developed prior art base, s 19(2)(a) effectively requires us to give greater weight to smaller differences between the designs than we would if it was less developed.​​​​​​​

However, this does not mean that the test of distinctiveness is reduced to whether there is any difference in impression between the designs. The overall requirement of ‘substantially similar in overall impression’ remains. Differences that do not affect the familiar person’s / informed user’s overall impression cannot amount to distinctiveness.​​​​​​​

See Prior art base for detailed discussion.

Amended Reasons

Amended Reason Date Amended