APAA e-Newsletter (Issue No. 43, October 2024)

Navigating Design Distinctiveness: Insights from Recent Australian Cases

Rodney Dabboussey - Spruson & Ferguson (Australia)

With one eye on IP Australia’s recommended substantial changes to Australian design practice (see here), we take this opportunity to review two recent design cases considered before the Delegate of the Registrar of Australian Designs.

The Apple Inc. airpod design case highlights the importance of the Statement of Newness and Distinctiveness (SOND) in Australia, and a strategic approach for design filings. We also look at the FCA US LLC automobile exterior case, which outlines how emphasising and clearly communicating even minor differences during examination can support a claim of distinctiveness.

Apple Inc. [2020] ADO 2 (17 July 2013)

Background

On August 24, 2021, Apple Inc. applied to register a design under the Australian Designs Act 2003 for a “case.”   Two of the representations for the design are shown below. Those of you familiar with Apple products will recognise that the depicted design relates to a case to store and charge Apple Air Pods.

                  

Closed Position                                                              Open Position

Notably, the Registration included Figures 1-8 depicting the case in a closed position, and Figures 9 to 15 depicting the case in an open position.

The design claimed priority from a U.S. design patent dated 11 November 2020. After passing through formalities, the design was registered and allocated design No. 202115002.

The request for substantive examination was then filed and an adverse report issued asserting lack of distinctiveness in light of Apple’s earlier design No. 202011411 (prior art) also for a case. Apple was unable to overcome the objection during normal examination and a hearing was set for 15 May 2023. The full decision can be found here.

More weight on similarities

In the decision, Apple conceded that the exterior of the case in the present design was similar to that of the prior art. However, the interior was not shown in the prior art, making it unreasonable to infer that the appearance of the interior of the prior art was similar to the present design. Therefore, the primary issue was whether the design’s interior contributed enough to its overall impression for it to be considered distinctive over the prior art.

Apple argued that the design of the case’s interior differentiated the total design enough to be considered distinctive. While the Delegate agreed that the internal features contributed to the overall impression, the interior is only part of the design, which, in all other respects, was identical to the prior art.

According to Section 19 of the Act, when assessing designs, more weight must be placed on similarities between prior art and the disclosure than the differences making the outer similarities significant in this context. Further, when assessing the distinctiveness, the individual performing this assessment must consider that: “if only part of the Design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the Design as a whole”.

Effect of the Statement of Newness and Distinctiveness

The Statement of Newness and Distinctiveness (SOND) filed with the application stipulated that newness and distinctiveness were claimed in the features of shape and configuration shown in solid lines in the representations.

Apple contended that even though the SOND specified that the design was directed to the shape and configuration of the solid line features, it does not mean that the interior features should be ignored.

In reply and noting that all the features in the representations were shown in solid lines in the application (as filed), the Delegate ‘s view was that the effect of the SOND in this case was the same as having no SOND because no particular features have been emphasised or de-emphasised. Under those circumstances, section 19(3) provides that:

(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.

Therefore, the effect of was SOND in this application was minimal.

Normal use of the product

Apple also contended that in normal use, the product is normally opened, making the internal features visible, suggesting that the informed user be more aware of these features contributing to its distinctiveness.

The Delegate agreed that in normal use, the interior would be visible; however, the product is a case which is used for transport, storage, and charging of earphones housed within. Therefore, its ‘primary purpose’ is in a closed position/configuration making this configuration more significant when comparing to the prior art.

Lacked distinctiveness

The Delegate ultimately found that this design lacked distinctiveness, establishing the grounds for revocation.  The Design would be revoked one month from the date of the decision. If a notice of appeal from the decision before that time, the revocation would be stayed until the appeal has been withdrawn or discontinued.

However, this is not the end of the story!

Surprisingly, a check of the Australian Designs database records reveals that this design is now certified. It is unclear if the Registrant requested an appeal, as this information is not readily available.  However, it appears that the Registrant was able to amend the representations following the hearing to convert all lines except those depicting the internal features to dashed/ broken lines. Under these circumstances, the SOND as filed would distinguish the internal features from the external features, allowing the design to be certified.

Takeaways

Notwithstanding the Registrant’s last-minute amendment, this case is a lesson in the importance of the SOND and a strategic approach for design filings.

Consideration of one’s own filings is often overlooked when applications are prepared.  If the earlier designs were considered at filing stage, the differences could have been better highlighted in the SOND.

Furthermore, stakeholders are reminded that there is no requirement in Australia to file a complete set of views showing all aspects of the design. In this case, the Applicant could have omitted some or all the closed position representations at filing stage and still claimed convention priority. Similarly, the Applicant could have modified the representations at filing stage to convert the outer lines to dashed lines (as they ultimately did post hearing), while still retaining convention priority.

FCA US LLC [2023] ADO 1 (30 May 2023)

Background

On 18 January 2018, FCA US LLC applied to register a design for an automobile exterior under the Designs Act 2003, claiming the priority from United States Designs patent application No. 29/616,449 filed on 6 September 2017 and was registered shortly thereafter.  Three of the representations accompanying the application are shown below.

The Owner filed a request for substantive examination on 10 November 2020, and a first examination report issued asserting that the design lacked distinctiveness because it was substantial similar to an image (‘citation’) posted on the JL Wrangler Forum website.   This image is shown below.

With the design unable to be certified during examination, the matter was heard on 1 March 2023 based on written submissions. The full decision can be read here.

Factoring in the appearance of the design as a whole, given the design lack a Statement of Newness and Distinctiveness (SOND), the Examiner initially decided that the Design and the Citation share obvious visual similarities. The Owner disagreed.

Challenge to prior art

Initially, the Owner challenged the publication date of the citation, asserting that the images from the forum website were not fixed. However, no evidence was provided to support this assertion.

In reply, the Delegate agreed with the Owner that some of the images appearing on the forum website were dynamic, particularly those associated with advertising. However, in the absence of further evidence, it appeared on balance, that the citation image was published on the website on 26 August 2017, and the publication date was upheld.

The owner also claimed that the citation image only showed the front perspective of the vehicle and limited detail of the top of the vehicle. In reply, the Delegate advised that the citation provided sufficient detail to assess the distinctiveness of the Design.

More weight to similarities

According to Section 19 of the Act, in determining whether the Design is distinctive over the citation, more weight is to be given to the similarities between Design and citation than to differences.

These similarities include the shape and configuration of the bonnet, the indicator lights within the front guards, the shape and configuration of the front bumper, the lights and shape of the front grille, the side fender having a scooped shape behind the front guards, fuel filler and the rear protection bar.

Prior art base

The Owner submitted that given the state of development of the prior art base, the informed user is likely to have a greater appreciation of smaller visual differences between the design and prior art for the purposes of distinctiveness. The Delegate agreed that the prior art base was crowded and that small differences are significant.

The owner argued that the features the examiner considered to be substantially similar were, in fact, points of difference, suggesting that because these features were not exactly the same, an informed user would notice them given the crowded prior art base. To support this, the owner provided a visual comparison between the design and the citation, identifying a substantive list of small differences.

Decision

In determining whether the Design is distinctive over the citation, the Act mandates that the standard of the informed user must be applied.  Although the test is based on impression, it is not based merely on a casual comparison between designs for a given article. A studied comparison based on the requirements of Section 19 of the Act is necessary.

The Delegate found the Owner’s submissions to comprehensive and convincing. Collectively, the identified differences serve to create a different visual impression between the Design and the citation. The Delegate therefore directed that the Certificate of Examination to issue.

Takeaways

In a crowded design field, even minor differences can be significant. It’s important to emphasize and clearly communicate these differences to support a claim of distinctiveness.

Following stakeholder consultation regarding expansion of Australian Design protection in 2023, IP Australia has proposed substantial changes to the Australian Government.