9.4. Identifying the design: Variable visual features

Many products have elements or features that are inherently variable – as opposed to products that are static in appearance. The visual features of the product that are the subject matter of the design must be assessed when the product is ‘at rest’ rather than in use.

There are also cases where a visual feature of a design will be significantly different after the product has been used (e.g. a candlestick). That changed appearance is not relevant to the considerations of newness and distinctiveness of the product before use, and the design protection will not extend to the different overall impression of the used product.

The decision in Reckitt Benckiser (UK) 76 IPR 781 provides guidance (at 10, emphasis added) on how to assess a design with variable visual elements or visual elements that change after the product is used:

… design protection is for the overall appearance of a product, not of its material of manufacture. Some products have a component of appearance that inherently depends on use (for example, an item of clothing such as a jumper ‘looks’ different depending on whether it is folded, hung on a clothes hanger, or worn). Other products are fundamentally static in appearance (for example, a hammer). In assessing a design, the informed user would recognize that features of variability that are inherent in the product are not per se visual features of the design, and duly discount the effects of such variability from the overall impression of the design. But for products that do not have an inherent variability of appearance, there is no basis for an informed user to assess the visual features on any basis other than in the form shown.​​​​​

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Features produced by software

The rule that visual features must be assessed ‘at rest’ applies to features produced by software. For example, a computer monitor might display icons when it is being used, but those icons are not part of the visual appearance of the monitor.

Examiners need to carefully assess the design as it appears on the Register to decide whether, on balance, the relevant visual features are produced by software. In the case of a display screen, this is very likely to be the case. Visual features that are displayed on, for example, the screen of a computer monitor through the operation of software do not exist when the computer is switched off. Therefore they are not part of the visual appearance of the computer.

The examiner might find that the relevant visual features exist as permanent markings (e.g. paint on the surface of the screen) or that some visual features are permanent while others are transient.

Where there is any doubt, we should find that the features are not visual features that form part of the design, and examine on the basis that they do not exist. Clarification can be sought from the owner in response to a 1^st report being issued.

​​​​​​Example

Historically it has been determined that transitory screen images are not considered to be a visual feature of a display screen or monitor. This determination was confirmed in Apple Inc [2017] ADO 6, which answered the following questions:

1. Whether an image placed in a dotted-line square box titled ‘display screen’ was a product

2. Whether the ground for revocation citing a blank display screen was appropriate.

Question 1 was answered on the basis that a display screen is something that is manufactured, meeting the definition of a product.

Question 2 was answered on the basis that images that appear on a display screen are not considered a quality or attribute of the display screen itself. They are not visual features of the display screen – they are manifestations of software in combination with hardware and streams of electrons.