15.4. Statement of newness and distinctiveness: Using the SoND to assess distinctiveness

If there is a (SoND), s 19(2)(b) requires us to give particular consideration to the features mentioned in it. If those features relate to only part of the design, we need to focus more on that part of the design – but still in the context of the design as a whole.

This instruction does not detract from the need to assess distinctiveness on the basis of the overall impression of the product. For example, specifying a particular feature in the SoND does not make the relevant familiar person / informed user any more likely to be aware of it. A SoND cannot convert an otherwise insignificant feature into a prominent one. The question is whether the familiar person / informed user would appreciate that the overall impression of the product design is different.

If the SoND identifies particular visual features that apply to the whole of the design, the effect is to narrow the scope of the design. For example, if it indicates that the entire surface of the product is a particular colour, the design right will be limited to products in that colour.

Example 1 (Design 202016569)

In Example 1, newness and distinctiveness is claimed in the features of shape, colour and/or configuration of the door knob shown in the representations.

If the SoND identifies features that relate to only part of the product, it may widen the scope of the design by distinguishing between the visual features of the design and the visual features that are generic to the product. For example, if it indicates that newness and distinctiveness resides in a particular part of the product, represented in colour, and the remaining features are represented in dotted line only, this means that these remaining features are not the focus of the design registration (the overall appearance that results from the particular part of the product represented in colour) and not limited to any colour or colour combination.

​​​​​​​​​​​​​​Example 2 (Design 201914459)

​​​​​​​In Example 2, newness and distinctiveness is claimed in the colour combination of the wheel and lock as depicted in continuous lines.

The distinctiveness of the design will depend on some or all of the visual features the SoND refers to. Where the product bearing the design being examined and the citation product are the same (or substantially the same), distinctiveness cannot arise from a feature that the SoND does not refer to or that representations indicate is generic to the product.

​​​​​​​

Example 3

The SoND for a design of a tea cup refers to the shape of the handle. A citation shows the same handle on a tea cup that has slight differences in shape. The fact that the tea cup in the representations has a somewhat different shape does not automatically result in the designs having a sufficiently different overall impression. Because the SoND identifies the handle as the area of distinctiveness, the assessment of newness and distinctiveness should be based on the appearance of the handle in the context of cups generally. (See the Designs ALRC Report 74, paras 4.14 and 6.21.)

Ambit statements of newness and distinctiveness

Occasionally a SoND will refer to non-specific areas of newness and distinctiveness such as:

… each feature of the design considered separately or in combination with any other feature or features.

Example

In Reckitt Benckiser Inc [2008] ADO 1, the delegate interpreted a statement like this as a reference to the combination of all visual features of the design as shown in the representations. The relevant paragraphs of that decision are (emphasis added):

43. The construction of this statement is problematic. It doesn’t identify any particular visual feature or features of the design. It merely refers to features, with an ambit claim of them being alone, or combined with one or more other features. Taking this at its simplest, I could opt to identify a visual feature as the shape of the basic container as shown in each of the present designs – in isolation from any other feature shown in the design – leading to the conclusion that all the present designs lack distinctiveness since the basic container is clearly shown in the anticipatory documents. And as the statement cannot be amended in any effective manner, this conclusion would inevitably lead to revocation of all designs.

44. However, I am not satisfied that this is the proper approach to take to such statements of newness and distinctiveness. I think that it is proper to recognize that with the implementation of the Designs Act 2003 the significance and use of the statement of newness and distinctiveness was not well understood by users. And this led to some users including statements like those of the present, supposedly to keep the owner’s options open. In the absence of identification of any specific visual feature in the statement, I think the preferable construction of such ambit statements is to interpret them in a manner such that the design is most likely to satisfy the requirement of being distinctive. That means interpreting the statement as being a reference to the combination of all visual features of the design as shown in the representations [which, arguably, means that the statement adds nothing to what is shown in the representations.] …