Watermark
| Watermark successfully tests Newness and Distinctiveness under the new Designs Act |
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16 July, 2007 This is also the first occasion on which the identity of the informed user was considered. Under the Act, substantial similarity in overall impression must be assessed by "applying the standard of a person who is familiar with the product to which the design relates … (the standard of the informed user)" (section 19(4)). The quantum of difference between the prior art and a design may be small, but where evidence establishes that the creator has limited freedom to create and that an informed user, because of the importance of a particular feature, will immediately note that difference, a design may nonetheless be validly registered.
In Icon Plastics Pty Ltd [2007] ADO 2, the validity of a design registration for an Electrode Plate Cover Edges Strip was considered in the light of the design owner’s own unpublished prior design. The design in suit was found to be a new and distinctive design and therefore not to be revoked.
Prior design no. 305113
Design in suit no. 303361
The decision of a Delegate of the Registrar of Designs establishes the importance of having a credible Declarant to establish ‘clear and convincing evidence’ on the knowledge and identity of an informed user, the impression received by an informed user, and on the functional restrictions governing the freedom of the creator of the design to innovate.
In this case, the Declarant was the owner’s Business Development Manager, and an expert in the field of Electrode Plate Cover Edges Strips (but not an informed user).
The Reasonably Informed User The delegate indicated that users include a range of persons, for example an informed consumer through to a design expert or aficionado, but that the informed user is a person selected from the range of users and is ‘reasonably’ informed. The informed user is not a ‘team’.
‘It is difficult to suggest that a notional informed user is a melding of the (probably divergent) views of those who exemplify a range of informed users. A better approach is to say that, in dealing with this jury question, the legislation defines a standard, such that the registrar or the court should postulate the view of a typical member of a sample of informed users’.
An informed user includes experts or aficionados, but such people do not constitute a ‘reasonably’ informed user. In this decision, it was found that the informed user was ‘an engineer responsible for the design of the copper refining process, or, at very least, a skilled foreman responsible for careful control of that process’.
Functionality and Immediacy of Impression In contrast to many other countries, functional designs are registrable in Australia. In this case it was held that the functional importance of a minor visual feature can influence or increase the contribution of that feature to the impression received by an informed user, but the impression must be immediate and not result from the informed user being able to ‘learn to tell one from the other’.
‘the refinement is dictated solely by clear practical and functional principles. However, that alone is not fatal to the registration once it is also noted that this is a field where shape is limited and functionality is paramount….’
‘Given the clear and convincing evidence of Mr Perham, it seems more likely than not that Icon’s new design would, in day to day use, be readily distinguishable from its own earlier design by reference to the internal shape. In saying this, I do not mean that, through repeated exposure, a reasonably informed user would come to learn to tell one from the other. Such a low threshold is inappropriate in principle and is in the present case expressly not my assessment of how a reasonably informed user would react. I think that, in practice, such a person’s reaction would be more immediate. A reasonably informed user, aware of the subtleties around the making of such cover strips, would immediately note the differing visual impact of the inner shape and react accordingly….’
‘it may still be said that in the rounding of the corners there is sufficient for ready identification of the two overall impressions. Therefore they are not, in terms of the legislation, ‘substantially similar’.
Statement of Newness and Distinctiveness The design in question included a Statement of Newness and Distinctiveness (which is optional under the Designs Act 2003) as follows:
"Novelty resides in the internal cross-sectional shape of the electrode plate cover edge strip of indefinite length as shown in the drawings".
According to the Delegate of the Registrar of Designs, a Statement of Newness and Distinctiveness ‘authorises’ an approach, but the Declaration that was submitted in evidence ‘guides the extent to which the Statement of Newness and Distinctiveness is applicable’.
Applicability of section 17(2) Under the previous Designs Act 1906, where an earlier unpublished prior design application was cited against a later application of the same owner it was possible to overcome the citation by converting to an application for a Design of Addition. This, however, is not possible under the Designs Act 2003 which does not provide for Designs of Addition.
Watermark argued that, due to the operation of section 17(2), the unpublished prior design should be disregarded when assessing newness and distinctiveness, as it was ‘information given by the owner to the Commonwealth’. The Delegate rejected this argument, considering that section 17 is an overlay on section 15 and that the only possible reading of section 15 ‘is that the prior art base includes the earlier design’. |
