Key takeaways

· Registered designs are trending.

· The alignment of registration and enforcement procedures makes registered designs straightforward to obtain and enforce.

· Test yourself: Using our patented side-by-side picture method, read on for recent decisions that clarify registrability and infringement standards.

Formula 1 pace of growth in design registrations

The value and utility of registered designs has significantly improved since the implementation of the Designs Act 2003 (Cth), which replaced an outdated and largely counterproductive designs scheme.

As a result, the popularity of registered designs has steeply risen, with IP Australia reporting an 11.5% increase in design applications and a 24% increase in design certifications from 2022-2023. This growth has been consistent over the last decade – from 2012 to 2023 the Designs Office recorded a 33.5% increase in registrations. Designs have an extremely broad range of applications, from large commercial projects to automotive, fashion products, and more, and can accordingly offer bespoke protection.

Australian design no 202315161 to Ferrari S.p.A.

A revised formulation of newness and distinctiveness

Prior to the 2003 Act, registered designs were relatively easy to obtain; the standard of registrability was quite low. However, many disgruntled design owners were left without any avenues of enforcement when their rights were infringed – though the bar to register was relatively low, the standard of infringement was disproportionately high. This inefficient discrepancy was eliminated by the new system, as the standard of registrability and infringement were effectively aligned. The current law at s16 permits registration of ‘new’ and ‘distinctive’ designs which are not ‘identical or substantially similar in overall impression’ to a design within the prior art base. Similarly, at s71, the same wording is used to assess whether a design infringes another registered design. The improved enforceability of s16 and s71 has considerably increased the public’s faith in registered designs by way of a more reasonable barrier to registration, and a broader scope of protection against infringers.

Australian Design no 202110478 to Oakley, Inc

TEST 1: Section 16 - a fair barrier to registration (FCA US LLC [2023] ADO 1 (30 May 2023))

Fiat Chrysler Automobiles applied to register a design for a new Jeep Wrangler. This case clarifies the application of ss16 and 19 and the test of overall impression compared to the prior art base.

During certification, the examiner objected to the registration on the basis of specific similarities between designs; Fiat requested a hearing.

In the hearing, Fiat, pursuant to ss 19(1) and 19(4), provided evidence from an informed user focused on the similarities raised by the examiner.

The Hearing Officer considered whether Fiat’s design (the design) was distinctive. In doing so, she appropriately gave more weight to similarities between designs than to differences when determining overall visual impression. The ‘substantially similar’ test is assessed using the standard of an ‘informed user’ (s 19(4)) who is familiar with products that are identical or similar to those of the design. Below is an example of a submitted difference, endorsed by a qualified ‘informed user’ in the relevant field of automotive design.

Take a moment to test your abilities.

Test your decision making skills: is the lower design registrable over the upper car?

SPOILER ALERT…

RESULT BELOW:

The informed user saw differences among the cited similarities, including the “shape and configuration of the hood formation”, the position of the headlights in relation to the grille, and the lack of a JEEP badge in the proposed design. The state of development of the prior art base was high; this was seen as a limitation on innovation.

The differences (and many more) were primarily direct responses to points of similarity noted by the examiner, and such were overruled due to the input of the informed user.

The Hearing Officer ultimately found that despite the visual similarities between designs, there were noticeable differences in “prominent areas where the informed user’s attention would likely be drawn”. The design was not held to be identical or substantially similar to the cited design, but met the newness and distinctiveness requirements.

This matter serves as a useful example of the ‘substantially similar’ test in the context of design registration, and the standard that must be met to be eligible for the monopoly afforded by a registered design.

TEST 2: Section 71 - a robust enforcement mechanism against infringers (GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520)

GME is the owner of registered design No 201613671 for a microphone, displayed left. It alleged that Uniden threatened to infringe GME’s registered design by launching the XTRAK UHF mobile radio product (‘XTRAK’). Uniden denied infringement but did not challenge the validity of GME’s design. Considering s 71 of the Designs Act and applying the same standards to infringement as those in ss 16 and 19 for registration, Burley J considered whether the XTRAK was substantially similar in overall impression to the GME design.

The certified design: No 201613671 to GME. Now look below for your test.

Test yourself: was this design found to be an infringement of the GME design above?

SPOILER ALERT…

RESULT BELOW:

This 2022 Federal Court decision demonstrates the enhanced enforceability of registered designs against infringers. Similarly to the process in the Fiat case, Burley J gave more weight to similarities than differences between designs (s 19(1)) and accounted for expert evidence provided by informed users (s 19(4)). His Honour additionally contemplated the developmental state of the prior art base in accordance with s 19(2), clarifying the scope of GME’s design rights. It was emphasised that this process requires design-by-design comparison and cannot be a general ‘mosaic’ of features of prior art designs to narrow the scope of a registered design.

After considering the similarities and differences between GME’s design and Uniden’s XTRAK in light of the prior art base and expert evidence, Justice Burley found the XTRAK to be substantially similar in overall impression.

In summary

The operation of the infringement section, s71, aligns with standards of registration established by section 16, and as such, Burley J’s declaration of infringement exhibits the coherent enforcement potential of registered designs. While the outcome in Fiat highlights newness and distinctiveness as a necessary barrier to unsubstantiated design registration, GME displays this doctrine’s potential as a ground to take down infringers.

Both cases exhibit the value of registered designs as robust and consistent intellectual property rights, essential to any well-rounded IP portfolio. Recent positive trends are no coincidence – design rights are stronger than ever and provide swift, cost-effective protection for a product’s appearance. For more information about how to protect and enforce your intellectual property rights, get in touch with our experienced team today.

William Jameson and Lester Miller

Photo cred: Israel Palacio on Unsplash

Testing, testing, one two: Design check