Australian Registered Designs Handbook - Shelston IP
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Australian Registered Designs Handbook
Introduction Welcome to Shelston IP’s Australian Registered Designs Handbook. The Australian Registered Designs System provides a fast and efficient mechanism for innovative companies to secure a monopoly for the visual appearance of commercially valuable products. Arguably, the Australian Registered Designs System is somewhat underutilised by those companies who would most benefit from its features. The Designs Office of IP Australia received around 7200 applications for registered designs in 2016, which was the highest on record. In comparison, the Patents Office received over 28,000 standard patent applications in the same period. It is pleasing to note, however, that use of the designs system in Australia is increasing, with innovative companies becoming more aware of the cost to benefit ratio associated with Australian design rights. Based on figures compiled by the Australian Government, the average rate of growth in design filings over the last five years is reportedly around three per cent (3%) per annum. The cost to benefit ratio of the Australian Registered Design System primarily arises from the nature of the registration process itself. Notably, a design proceeds to registration after simply undergoing a formalities check, with the substantive examination procedure an optional post-registration step. Thus the costs associated with substantive examination can be deferred or, in many cases, avoided altogether. The Australian Government data highlights that current users of the Australian Registered Designs System readily understand the benefits of deferring examination until there is a commercial need to do so. In 2016, the Designs Office of IP Australia registered over 6,600 applications. By way of comparison, only around 970 designs were examined and certified in the same period. To assist innovative companies in gaining a better understanding of the value of the Australian Registered Designs System, this Handbook provides: • a quick reference practical guide to the features of the Australian Registered Designs System; • a summary of Australian Designs Office Decisions issued in 2017. If you have any questions or require further information on the Australian designs system, please do not hesitate to contact me or any member of the Shelston IP Design Team listed at the end of this document. Greg Whitehead Principal, Patent Attorney GregWhitehead@ShelstonIP.com 2 | Shelston IP | Australian Registered Designs Handbook 2017
Contents
1. Practical Guide to Registered Designs in Australia. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
2. Australian Designs Office Decisions 2017. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Decision 1: Kmate Pty Ltd v David Mills [2017] ADO 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Author: Scott Philp
Senior Associate, Patent Attorney
Decision 2: Apple Inc [2017] ADO 2. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
Author: Andrew Lowe
Senior Associate, Patent Attorney
Decision 3: Artisent, LLC [2017] ADO 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
Author: Allira Hudson-Gofers
Senior Associate, Patent Attorney
Decision 4: Apple Inc [2017] ADO 4. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
Author: Michelle Catto
Patent Engineer
Decision 5: Apple Inc [2017] ADO 5. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
Author: Michelle Catto
Patent Engineer
Decision 6: Apple Inc [2017] ADO 6. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Author: Rodney Dabboussy
Senior Associate, Patent Attorney
Decision 7: Apple Inc [2017] ADO 7. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
Author: Andrew Lowe
Senior Associate, Patent Attorney
Decision 8: Sun-Wizard Holding Pty Ltd v Key Logic Pty Ltd [2017] ADO 8. . . . . . . . . . . . . 17
Author: Greg Whitehead
Principal, Patent Attorney
Shelston IP | Australian Registered Designs Handbook 2017 | 31. Practical Guide to Registered
Designs in Australia
Overview Minimum filing requirements
A design right protects the overall appearance of a To complete the filing of a design application in
product and allows the owner to exclude others from Australia the following details are required:
using the design in any commercial way in Australia
• Applicant details
for up to 10 years. The protection afforded by design
rights relates to a unique visual appearance of a • Designer details
product arising from the features of:
• Title or Product Name
• shape and configuration
• A set of representations of the product/design
• pattern and ornamentation.
• Convention details (if any)
Design rights do not extend to the feel of a product,
the materials from which a product is made, or the Note:
functionality of a product.
• No power of attorney is required.
• No certified copy of a basic application is required
Registrable designs (unless requested by Designs Office, which rarely
A design is a registrable design if it is new and occurs in practice).
distinctive when compared with the prior art base
for the design, as it existed before the priority date of Statement of newness
the application. and distinctiveness
A design is new unless it is identical to a design that It is possible, although not mandatory, to include
forms part of the relevant prior base. in an Australian design application a so-called
“statement of newness and distinctiveness” directed
A design is distinctive unless it is substantially towards specific features of the design deemed to be
similar in overall impression to a design that forms of particular significance; that is, those features which
part of the relevant prior base. the owner considers be new and distinctive.
In Australia, the registrability of designs is assessed Where a statement of newness and distinctiveness
against a ‘relative’ newness standard. The prior art is included in a design application, a person (e.g.
base comprises any designs that were previously: Examiner or Court) deciding whether a design is
• used in Australia substantially similar in overall impression to another
design must have particular regard to those features
• published in a document anywhere in the world listed in the statement.
In addition, the assessment of whether a design is
Application process substantially similar in overall impression to another
design must: give more weight to similarities
The Australian design application process is between the designs than to differences between
summarised below. Notably, a design proceeds to them, and have regard to the state of development of
registration after simply undergoing a formalities the prior art base for the design.
check. Substantive examination is an optional post-
registration procedure. It is for this reason that the
process from filing to registration in Australia is both
fast and highly cost-effective.
4 | Shelston IP | Australian Registered Designs Handbook 2017The following information can assist in the
consideration of whether or not to include a
Term of registration
statement of newness and distinctiveness: The maximum term of registration is ten (10) years
from the filing date of the Australian application in
• details of the features which the owner considers
which the design was first disclosed.
to be new and distinctive
The initial term of a design registration is five (5)
• details of any existing designs in the same field as
years. A single renewal fee is payable before the fifth
the product in question
anniversary of the Australian filing date to extend the
term of registration to ten years.
Formalities
In Australia, a design application is subjected to a Possible future developments
formalities check shortly after filing. The formalities
check includes an assessment of whether: the Key future develops of note include the possibility
minimum filing requirements have been met, the of Australia:
representations/drawings are consistent and relate
• joining the Hague Agreement
to a single design (or that each separate design is
identified), and the title is sufficient for the • introducing a grace period for designs (one is
application to be classified according to the currently available under Australia’s patent system)
Locarno Classification.
Registration Hague Agreement
Once the formalities check is complete, the design The Australian Government is committed to ongoing
will proceed to registration and the Designs Office will assessment of the costs and benefits of joining the
issue a Certificate of Registration. Upon registration, Hague Agreement. The Australian Government is
the details of the design (including the drawings) will not yet convinced that joining the Hague Agreement
be published. would provide overall benefits to Australian
consumers, particularly noting that the term of
This stage typically occurs 1-3 months after the filing registration would need to be extended to a minimum
date in Australia. of 15 years.
Substantive examination
Grace period
In Australia, the substantive examination process is
an optional post-registration procedure. This step There is currently no grace period available under
must be undertaken and completed for the design the Australian Registered Designs System. The
to be enforceable. However, in the absence of Australian Government has agreed that certain
any pressing commercial need to complete the benefits would arise by introducing a grace period for
examination phase, this step can be deferred together design application filings. It is thought that a grace
with the associated costs. period would help address lack of understanding of
design law surrounding the requirement to maintain
A third party is also entitled to request examination of confidentiality of new designs before filing a suitable
a registered design. design application. A grace period would also assist
to address concerns about inadvertent disclosure
Certification and provide designers with a window in which they
can undertake some market testing with potential
Upon successful completion of the substantive customers without losing eligibility for protection.
examination process (including overcoming any
prior art objections), the Designs Office will issue
a Certificate of Examination and the registration is
deemed certified and enforceable.
Shelston IP | Australian Registered Designs Handbook 2017 | 52. Australian Design Decisions 2017
Below is a summary of decisions issued by the Design 201115193 (‘the Second
Australian Designs Office of IP Australia in 2017. Design’)
These decisions highlight some issues to bear in
mind for good designs practice in Australia. The Second Design was entitled “Two stroke motor
block: and accompanied by the statement of newness
and distinctiveness: Novelty resides in the shape and
Kmate Pty Ltd v David configuration of the charging ports as depicted.
Mills [2017] ADO 1
(31 January 2017)
Introduction
David Mills (“Mills”) registered two designs relating to
two stroke combustion chambers.
The Designs
Design 201115323 (‘the First Design’)
The First Design was entitled “Two stroke combustion
chamber and porting” and accompanied by the
statement of newness and distinctiveness: Newness
and distinctiveness resides in the shape of the
combustion chamber and ports. Background and Issues
Mills requested Certification of both design
registrations which were duly certified with no
adverse findings. Subsequently, Kmate Pty Ltd
(“Kmate”) filed a second request for examination
including evidence toward the newness and
distinctiveness of the designs. Both Mills and Kmate
filed further evidence prior to the matter being heard.
The Decision
The comparison between the prior art and each
design registration was made on the basis of
the following:
Both designs relate to a component of a “cateye”
two stroke engine.
The standard of the informed user applied was
that of those familiar with this type of engine part.
6 | Shelston IP | Australian Registered Designs Handbook 2017This would be either a supplier (designer and/or The SG-4 Prior Art
manufacturer), an intermediary who distributes or
markets the parts, or an end user who assembles,
modifies or maintains cateye engines (or similar).
The prior art base for cateye engines was regarded as
being highly developed such that smaller differences
to the prior art, provided they are of sufficient
importance to the informed user, might be sufficient
for a finding of distinctiveness.
Furthermore, it was submitted by Mills that
differences to the ports even if seemingly small to
the unpractised eye can alter the characteristics of
2-stroke engines even to the point where an engine
might be “non-workable or lacking performance to
the extent of being commercially unviable.” And that:
“Since slight changes will impact engine performance,
the freedom of the creator to innovate on these areas
must in turn be highly constrained.”
Mills argument was therefore based on (a) the
In response Kmate argued that functionality is ‘importance’ of the external areas of similarity being
relevant to the question of distinctiveness only insofar less than the ‘importance’ of internal features by the
as that functionality is embodied in a visual feature. standard of the informed user; and (b) the internal
differences of (i) “shorter ports”; (ii) “rounded at the
The First Design point where the port meets the combustion chamber”
and (iii) “rounded where the port wall meets the port
The Parties largely agreed on the points of similarity base“ outweighed the similarities.
and difference between the design and relevant prior
In relation to point (a) the Delegate disagreed noting
art (“the SG-4 prior art”. The fins and external features
that Section 19(1) requires that more weight must
appeared generally identical.
be given to similarities than differences in the overall
The First Design and the prior art are displayed below. assessment, and this overarching requirement cannot
be negated by the narrow focus of the statement of
The First Design newness and distinctiveness. Thus the Delegate was
compelled to have regard to the “great” similarity
between the external features of the design and those
of the SG-4 prior art.
The Delegate noted that without some explanation
as to how and to what degree the three visual
differences would result in different engine
performance, it would be impossible to reasonably
conclude that they are as significant as Mills argued.
On that basis, the Delegate found that the First
Design was not distinctive over the prior art base.
Shelston IP | Australian Registered Designs Handbook 2017 | 7The Second Design Length - ‘port design [of the Second Design] is
proportionately thin which prevents the air/fuel
The Second Design and the relevant prior art (“the mixture from expanding too much in the cylinder.’
SG-10 prior art”) are displayed below.
Square Shape - ‘improve the flow of the fuel/air
mixture and also pressure inside the combustion
The Second Design chamber’
Thinner sub-port .... will result in higher pressure in
the combustion chamber.
Port divider shape - narrower and squared port
divider provides better support for the piston and
improves the separation of the sub-ports
Mills argued that “it is possible to determine from
a visual inspection that the Second Design offers a
denser fuel/air mixture, greater flow rate through the
ports and a higher combustion chamber pressure
than the SG-10 prior art.”
The Delegate stated:
The state of the prior art base is again such that
smaller visual differences may be sufficient for a
finding of distinctiveness. In contrast to the First
Design, the evidence provided by the Owner
permits me to be reasonably satisfied that several
The SG-10 Prior Art of the visual differences to the internal features
in the Second Design when compared with
the SG-10 prior art, although slight, would alter
the performance of an engine built using these
engine cylinders. The creator was relatively freer
to innovate with regard to the external features,
and I have identified several points of difference in
that regard. The specialised nature of the product
combined with the crowded prior art base means
that these differences would result in a substantial
difference of overall impression from the
perspective of a person familiar with two-stroke
engine cylinders. I therefore find that the Second
Design was distinctive at its priority date.
The Significance
This decision demonstrates the importance of
considering the overall visual appearance of a product
In contrast to the First Design, there were notable
when assessing the scope of a registered design. The
differences in the external features of the Second
decision also reinforces how the extent of existing
Design and the SG-10 prior art. There were also
prior art designs and the associated freedom of
differences in the port design including:
designers to innovate in a particular field affects the
nature of design rights in that field.
8 | Shelston IP | Australian Registered Designs Handbook 2017Apple Inc [2017] ADO 2 Design number 201315363
(31 March 2017)
Introduction
This decision considers the registrability of six (6)
designs relating to electronic devices. Apple Inc.
(Apple) is listed as the owner of each design. Each of
the designs is said to relate to Apple’s iPhone 5c.
The Designs
Representations from each of the six designs
are provided below. Each design is entitled
“Electronic device”.
Design number 201315364
Design number 201315631
Design number 201315365
Design number 201315362
Shelston IP | Australian Registered Designs Handbook 2017 | 9Design number 201315366 These three designs (Design Nos. 2013153363,
2013153364 and 2013153366) were ultimately held
to be novel and distinctive over the two citations.
The other designs either had no SOND or a SOND
that focussed on other features. Accordingly, the
remaining designs were held not to be distinctive
over the prior art, and so were revoked.
The Significance
The case highlights the importance of considering
whether or not to include a ‘statement of newness
and distinctiveness’ (SOND) highlighting the
perceived distinctive features of the design in a
design application, particularly in crowded fields.
(the iPhone 5c designs)
This decision demonstrates that the validity of a design
can turn on the decision to include or omit a SOND.
Background and Issues It is important to remember that, where a SOND is
Apple filed an application for each of these six included in a design application, a person deciding
designs on 18 October 2018. The designs proceeded whether a design is substantially similar in overall
to registration before Apple requested examination of impression to another design must have particular
each of the iPhone 5c designs. During examination, regard to those features listed in the statement.
the Examiner raised two prior art citations. Both
In this case, the revoked designs included the
citations were artist mock-ups of possible designs in
features that were found to be sufficient to render
online articles speculating as to the appearance and
the valid designs distinctive over the prior art, but as
function of the then upcoming iPhone 5c. Expert
the SONDs (or lack thereof) of the revoked designs
evidence showed that an informed user would focus
did not specify the relevant features, they were not
on the visual appearance of the shape of the body
given greater weight in comparing them to the prior
of the phone, especially its edges, and the extent of
art citations.
screen coverage.
Apple in its submissions highlighted three points
of difference from the citations – the designs
had a stepped transition between the side wall
and the screen; the side wall having a curvature
as it terminates at the screen (giving a rounded
appearance to the edge); and the shape of the
curvature between the side and back of the phone.
The Decision
The Hearing Officer agreed with Apple’s submissions
but noted that only three of the six designs had a
‘statement of newness and distinctiveness’ (SOND)
directed towards one of the identified features of
difference.
10 | Shelston IP | Australian Registered Designs Handbook 2017Artisent, LLC [2017] This response was unsuccessful and led to a hearing,
where the starting point considered whether the
ADO 3 (24 April 2017) Designs are new and distinctive relative to the prior art
base. If they are, consideration of section 18 becomes
unnecessary. The Owner’s position is that the prior
Introduction disclosures, for want of detail, do not adequately
anticipate the Designs and therefore the Designs are
This decision considers the identification of qualifying new and distinctive. The Owner’s alternative position
copyright works for reliance on section 18 of was that the Designs are “corresponding designs” for
the Designs Act 2003. In limited circumstances the purposes of section 18(1)(b) of the Act and are not
this section immunises a design registration to be treated as other than new and distinctive.
corresponding with an earlier artistic work from
invalidation through prior publication where that
publication occurred “by reason only of any use The Decision
previously made of the artistic work”.
The delegate confirmed that it is not required for prior
art to disclose all angles of a design before it can form
The Designs the basis of an objection. The delegate indicated that
they were satisfied that the catalogue shows sufficient
detail against which to assess the distinctiveness of
the design. Further the delegate was satisfied that the
prior disclosures anticipate the Designs and that the
Designs are not new or distinctive. The delegate then
considered whether a qualifying copyright work can be
identified, as follows:
• CAD images of the product – found not to be
artistic works, instead part of a literary work for the
356855 Visor 356856 Helmet mounted purposes of the Copyright Act 1968
microphone
• Prototype of the product – the evidence showed
that the prototypes were produced either for
putting pictures in the Catalogue, or as a step in
the production process. The prototypes were not
found to be sculptures or artistic works within the
meaning of the Copyright Act 1968.
• Photographs of the prototype – would qualify
as an artistic work if the prototypes qualified.
356858 Visor and 356859 There is no qualifying artistic work for the purposes
mandible shield Mandible shield of section 18(1)(a) of the Act. Designs found not to
assembly be new and distinctive at priority date. Examination
completed and designs to be revoked.
Background and Issues The Significance
Examination of the Designs raised a ground for Prior art is not required to show all angles of a design
revocation in each case that the Design was not new before it can form the basis of an objection. Computer
and distinctive because it is substantially similar in implemented drawings may be considered literary
overall impression to prior disclosures by the Owner. works, not artistic works. Artistic merit is not a
In response the Owner sought to rely on section 18 of consideration in determining whether something is an
the Designs Act 2003. artistic work, while artistic intention is a consideration.
Shelston IP | Australian Registered Designs Handbook 2017 | 11Apple Inc [2017] ADO 4 The Decision
(16 May 2017) The Designs Office held that the relevant informed
user in this case was a person familiar with in-line
earphone controllers. It was held that, due to the
Introduction well-developed prior art base, the informed user
would be accustomed to noting smaller differences
This decision considers the registrability of a design, in designs.
having regard to the knowledge of the notional
‘informed user”. The Designs Office noted significant features of
similarity (the buttons) but considered that these
were outweighed by significant features of difference
The Design (the curves). The curved edges were held to have
a significant effect on the overall impression of the
Apple Inc. (Apple) is the owner of Australian design
component, and it was held that the designs are not
registration number 349501(the Design) which
substantially similar in overall impression.
includes the following representation:
The Significance
This decision reinforces the effect of a crowded field
in enabling smaller design differences to distinguish a
new design from the prior art.
FIG. 1
The design was registered on 27 June 2013 and is
entitled “input mechanism for an earphone”.
Background and Issues
During examination of the Design, the Examiner
objected to the Design in view of a single prior art
publication, namely USD597071, which related to
an earlier model Apple in-line earphone controller.
Three expert opinions were provided by Apple: a
freelance technology journalist, a patent attorney
and a patent scientist.
The experts indicated that they would distinguish
between designs for in-line earphone controllers
based on:
the number of buttons on the controller;
the shapes and labelling of the buttons;
colour; and
the shape of the housing.
12 | Shelston IP | Australian Registered Designs Handbook 2017Apple Inc [2017] ADO 5 Apple requested examination of the design and the
Examiner objected in light of prior art in the form of
(31 May 2017) two YouTube videos, an Australian registered design
and a United States registered design. Both of the
previously registered designs were for the Apple
Introduction iPhone 5, while the YouTube videos were speculative
mock-ups of Apple designs.
This decision relates to three design applications for
ornamentation on the Apple iPhone 5S. The YouTube citations were quickly dismissed as
they did not show the home button or the gold
colouring, and the design application was compared
The Design to the registered design for iPhone 5. Emphasis in
the comparison was placed on ornamentation rather
Australian design registration numbers 354419,
than three-dimensional form, as attention was drawn
354401 and 354416.
to this aspect of the design by the (SOND). However,
it was noted at several points that it is difficult to
separate these elements as the ornamentation is
bounded by elements of shape and configuration.
The Hearing Officer accepted that, due to the well-
developed prior art base, users were accustomed
to identifying designs by smaller differences. Four
expert witnesses stated that they were accustomed
to noticing differences between touchscreen
smartphone by looking at:
the arrangement and shape of ports;
the extent of screen coverage;
body shape, especially at the edges; and
detailing and finish.
The Decision
Ultimately, the Hearing Officer ruled that the designs
were not similar in overall impression noting that,
for those familiar with the product, the impression
created by the gold finish and tonal contrast had the
effect of signalling a change between generations of
the iPhone.
Background and Issues The Significance
Interestingly, the representations of each design
This decision shows how a SOND in combination
includes a somewhat unusual feature: “explanatory
with explanatory text may be used to draw attention
text”. The explanatory text states that the use of dot-
to a specific aspect of a design within a particular
dash lines defines a boundary area of a shaded area,
portion of the product in question. In this case, the
or of the area referred to in the statement of newness
relatively narrow SOND and explanatory text played a
and distinctiveness (SOND), and that the dot-dash
part in the positive ruling on distinctiveness, despite
lines do not form part of the design. The SOND draws
the crowded prior art base.
attention to the features of ornamentation within the
dot-dash line, or of the shaded areas.
Shelston IP | Australian Registered Designs Handbook 2017 | 13Apple Inc [2017] ADO 6 The second objection was referred to as ‘the
Novelty Objection’ and refers to an ‘office practice’
(14 June 2017) of examining as though the product to which a
design relates is at rest. For a display screen – an
electronic component – this entails considering the
Introduction representations as though the component was not
connected to a source of power.
Designs Office decision on the registrability of a
design for a display screen. The report cites a news article from 21 November
2010 against this plain looking quadrilateral. This
article contains a number of images of clones of the
The Design ‘iPod 6 Nano’. Below is an image from this news
article showing a device with an inactive screen.
The design was registered as Australian registered
design number 353361 and included a single
representation, as shown below. The Decision
The Owner responded to the two objections raised in
the first examination report. As to the Subject Matter
Objection, the Owner contested the publication date
of the first news article. As to the Novelty Objection,
the Owner suggested that it was impermissible for the
examiner to refer to material outside of the application
in order to conclude that most of the visual features of
the design are a result of computer software:
‘[The Owner] submits that the design should be
examined on the basis of the representations as
filed, and that the examiner should not be ignoring
features of the representations based either on
extraneous materials or assumptions as to on or
Front View
off states.’
A second adverse examination report issued which
Background and Issues withdrew reference to the first news article, but
maintained both the Subject Matter Objection and
A request for examination of the design was made
the Novelty objection. This time, both objections were
on 26 February 2014. A first examination report
apparently based on the second news article.
issued on 13 June 2014 asserting that the design
did not meet the subject matter requirements nor The Owner asked to be heard and a hearing was set
the newness and distinctiveness requirements for down before the Designs Office.
registration under Australian Designs Law.
At the hearing, the Owner submitted that changes
The first objection which the Examiner referred to in technology over time has led to images that
as ‘the Subject Matter Objection’, draws on a news appear on display screens becoming visual features
article which purports to be from 9 June 2013. It of those screens. The Owner contended that today
relates to the launch of an audio streaming service by ‘the images presented on a display are critically
the Owner, of which the Examiner states: important visual features.’ The central illustration the
Owner offered in support of this assertion is the move
[The news article] strongly indicates that all the
away from smaller display screens which relied on
visual features exhibited in your registered design
keyboards and other hardware to interact with the
are produced by computer software. It follows that
images which appear on them, toward larger screens
there does not appear to be a design in relation to
that are themselves the basis for user interaction.
a “product” ... [The Design] appears to be devoid
The Hearing Officer agreed that this shift has plainly
of any thing that is manufactured...
14 | Shelston IP | Australian Registered Designs Handbook 2017happened and continues to happen, but did not The Owner’s submissions failed to convince the
see how the general move from terminals to touch Hearing Officer to depart from the initial findings
screens challenges the hardware/software divide. on the examination. Thus it was held that since the
Thus the Hearing Officer maintained that the images citation is identical to the design at rest the design
that appear on a display screen are not visual features was not new at the priority date and must
of the display screen. Rather, they are manifestations be revoked.
of software in combination with hardware and
streams of electrons.
The Significance
The Owner’s representatives pointed to recent
marketing trends in smartphones and similar This decision highlights that the Australian Government
devices, noting that they are now typically must move quickly to review its designs law to ensure
marketed in their ‘on state’ in order for the viewer it adequately rewards designers and innovators
to distinguish between operating systems and working in new and evolving areas of technology.
perhaps manufacturers. The Hearing Officer was not The Australian Government has recognised that the
persuaded that a user would distinguish between the manner in which non-physical designs are assessed
visual features of the display screens on this basis. needs to be reviewed. Until then, and any resultant
change to Australian designs law, it will still be possible
Another example offered by the Owner relates to to file and gain registration of such designs in Australia
a proliferation of ‘standby mode’ in a number of (noting Australia’s system of registering designs prior
common electronic devices incorporating display to substantive examination). Designs owners will
screens, which it submitted blurs the distinction however need to be mindful as to the doubt over the
between what is an active state and what is not. validity and enforceability of such designs until the law
The concrete examples given were in relation to is changed.
a smartphone or similar device. It was put to the
Hearing Officer that the display screen will commonly
show certain images when on and unlocked, others
when on and locked, and others still even when the
device is switched off and charging. Even the last
of these examples, despite being nominally
‘switched off’ the device is not actually at rest,
but is necessarily connected to a source of power.
All of these examples concern a smartphone
or similar device, not only its ‘display screen’
component which is (at least nominally) the product
to which the Design relates.
The Owner also raised the recent proliferation of 3D
printing. The argument here is that the images on
a display screen appear in much the same way as
the products of a 3D printer, that is, a combination
of software, hardware and power are required for
its output. However, it seems to me that there is an
important distinction missed in that analogy. The
output from a 3D printer requires a fourth input,
printing material. The material is shaped by the
3D printer, and the result persists after the printer
has printed out the product. The result is in itself
‘a product’ – a thing that is manufactured, and so
its visual features are eligible for design protection,
separate to the printer from which it emanated.
Shelston IP | Australian Registered Designs Handbook 2017 | 15Apple Inc [2017] ADO 7 The Significance
(23 June 2017) It is important to carefully characterise the distinctive
features of a design, especially where there is a
change in appearance from one state to another
Introduction state, so that there is not any conflict that could give
rise to a multiple design objection. The case also
Designs Office decision on the multiple designs in a illustrates the relative strictness of current Australian
design application. Design Office practice in determining the presence of
multiple designs.
The Design
Design Application No. 201511115
Figure 1 Figure 2 Figure 3
Background and Issues
Apple sought registration of the above Design but
a formalities objection was made on the basis that
Figures 1 to 3 showed three different designs.
The Design stated that the figures showed the
same design but in a different “configuration”.
The Statement of Newness and Distinctiveness
(SOND) for the Design referred to the “pattern
and/or ornamentation” shown in the figures.
The Decision
The Hearing Officer held that “configuration” relates
to a three-dimensional feature of a design, whereas
“pattern” and “ornamentation” are two-dimensional
features. In the Design, the changes in appearance
from Figures 1 to 3 were two-dimensional and so
could not be a result of a change in configuration.
Other arguments relating to copyright and
skeuomorphism were not persuasive. Therefore,
each figure was held to be a separate design. As
the additional fees for extra designs were not paid
and the application was not amended to show one
design, the application was refused.
16 | Shelston IP | Australian Registered Designs Handbook 2017Sun-Wizard Holding bollard design. Key Logic conceded that these images
disclosed the Design. The question was whether these
Pty Ltd v Key Logic images were ‘published’ by transmission of the relevant
emails or were the emails sent to their recipients
Pty Ltd [2017] ADO 8 in circumstances which imported an obligation of
confidence and as a consequence the images were not
(17 October 2017) ‘published’ for the purposes the Designs Act. Notably,
the text of the emails sought to inform the recipients
of a new solar bollard design by Exlites. And one of
Introduction the emails contained a ‘standard’ confidentiality notice
Key Logic Pty Ltd (Key Logic) is the registered below the signature block.
design owner. Sun-Wizard Holding (Sun-Wizard)
made a third party request for examination of the
The Decision
design, asserting that the design was not new and
distinctive based on email communication from the The decision was based on the principle that, apart
previous owner of the design before the priority date. from where confidentiality is imposed by contract, there
are two requirements which must be satisfied before
information is considered to have been provided with an
The Design obligation of confidence:
Key Logic is the owner of Australian design 1. the information must have the necessary
registration number 332890 which includes the quality of confidence about it;
following representation:
2. the information must have been imparted
in circumstances importing an obligation
of confidence.
The Designs Office held that the relevant email
correspondence was not sent in circumstances
importing an obligation of confidence on the
recipients. It was also held the confidentiality notice
below the signature block is not sufficient to maintain
confidentiality in the information contained in the email.
The images of the solar bollard contained in the email
correspondence were therefore deemed to be published
before the priority date of the Registered Design. Thus,
(the Registered Design) the design is not new and distinctive when compared
with the prior art base, and consequently is not a
The Registered Design was registered on 24 September
registrable design.
2010 and is entitled “Solar Bollard”.
Background and Issues The Significance
This case reinforces the importance of maintaining
The parties involved in this matter had a prior
confidentiality in industrial designs before proper
relationship. Mr Ian Fry (now a director of Sun-Wizard)
protection has been sought.
was previously a director of Exlites Pty Ltd (Exlites)
(the previous owner of the Design) alongside Mr Innovative companies must establish proper
Michael Arieni (now of Key Logic). Before the priority communication and knowledge management protocols
date, a number of emails were sent from Exlites to a for staff to ensure confidential information is not publicly
distribution list of its customers and potential customers. disclosed before time, particularly bearing in mind
The relevant emails contained attachments in the that there is currently no grace period provision under
form of brochures which contained images of a solar Australian designs law.
Shelston IP | Australian Registered Designs Handbook 2017 | 17Shelston IP Design Team
Greg Whitehead, Principal Russell Davies, Principal
GregWhitehead@ShelstonIP.com RussellDavies@ShelstonIP.com
Greg expertly drafts, prosecutes and Russell has over 25 years of patent
defends patent and design rights in and registered design experience.
the field of mechanical engineering. A trusted advisor to some of the
His areas of expertise include firm’s key clients, he provides high-
automated manufacturing systems, robotic systems, level IP portfolio management and commercialisation
vision systems, automotive products, medical advice across a wide range of industries. Prior to
devices, micro-optic based security systems, building joining the IP profession, Russell worked as a design
systems, and related products and processes. engineer and brings to his work a deep understanding
of and appreciation for the engineering design process.
Caroline Bommer, Principal
CarolineBommer@ShelstonIP.com Rodney Dabboussy,
Senior Associate
Caroline has been providing RodneyDabboussy@ShelstonIP.com
strategic patent and design advice
to our clients for over 25 years. A registered patent attorney
Her background in mechanical in the mechanical engineering
engineering and prior industry experience gives field, Rodney’s background is in
her advice a practical and commercial focus. special purpose machine design and manufacturing
She also provides IP portfolio management and process improvement. Rodney has extensive
commercialisation advice and litigation support experience in Registered designs – from filing through
for the enforcement of registered design and prosecution to defence, of his client’s designs. His
patent rights. expertise further spans to building and construction
technology, automotive and transportation technology,
Allira Hudson-Gofers, manufacturing technology and power generation.
Senior Associate
AlliraHudsonGofers@ShelstonIP.com Andrew Lowe, Senior Associate
AndrewLowe@ShelstonIP.com
Allira specialises in the provision of
commercially relevant advice on Andrew advises on patent and
design protection and infringement. design protection in mining and
Her expertise includes medical devices, agricultural minerals processing, electronic
technologies, consumer goods, building systems devices, gaming, renewable energy,
and construction; robotics; sustainable technologies; medical devices, building construction, mechanical and
manufacturing; sporting technologies; and nanosensors. manufacturing technologies.
He expertly drafts patent specifications, prosecutes
Scott Philp, Senior Associate patent and design applications and provides validity
ScottPhilp@ShelstonIP.com and infringement advice in these areas.
Scott has extensive experience Michelle Catto, Patent Engineer
preparing, prosecuting and MichelleCatto@ShelstonIP.com
enforcing industrial designs
applications and registrations Michelle’s background is
both within Australia and internationally. mechanical engineering,
Notably, Scott acts for a variety of multinational specialising in biomedical
clients co-ordinating design and patent engineering. She has experience
protection throughout South East Asia. in the medical device industry and with a range of
manufacturing technologies.
18 | Shelston IP | Australian Registered Designs Handbook 2017Notes
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