Designs Office hearing decisions, such as Manitowoc Foodservice Companies LLC  ADO 3 (1 November 2012) (“MFC”), remind us all that the representations filed in respect of an Australian design registration are not divorced from the product itself. Yes, the representations on the designs register need to show the design applied to the product in order to properly protect the appearance of that product from unauthorised copying. However, there are inherent limitations to how features of a product, particularly 3-dimensional features, can be shown in 2-dimensional images on the patent register. Even though features might be clearly shown, their prominence with respect to the rest of the design can be suppressed by type of image used and the image quality on the designs register.
In the MFC decision, the hearing officer determined whether the registered design for the “Ice Making Machine” included features sufficiently distinctive over a prior art ice making machine to overcome examination objections and progress the registered design to certification (and therefore become enforceable).
The hearing officer considered the design representations as unexceptional, and the filed statement of newness and distinctiveness (SOND) “The newness and distinctiveness of the design resides in the visual features of shape and/or configuration of AN ICE MACHINE as shown in the accompanying representations” carried no weight as it did not highlight any feature of particular distinctiveness.
Additional photos of the actual product filed by the Applicant after the hearing had the intention of drawing out the visual significance taken on by the curved ventilation ribs when seen in reality on the actual product and not merely as shown in the line drawings of the Design representations. Although shown in the black and white line drawing original representations, the curvature of the ventilation ribs (compared to straight ribs in the prior art) did not appear as significant or prominent as they perhaps did in reality.
The hearing officer referred to an earlier Designs Office decision Sportservice Pty Ltd  ADO 6 (10 October 2007) (“Sportservice”) considering the registrability of a bicycle rack for attachment to a car:
“In the present case, the collar as shown in the representations looks quite inconspicuous. The collar as existing on a ‘real’ product was more conspicuous than the representations suggest. I have closely compared the representations with the actual product, and I’m satisfied that the representations do accurately represent the actual product.
I should add that while the collar was more visible in the actual product than I expected, it was not a dominant feature. And if the product had been painted matt black, it might have been unnoticeable.”
Design features that are quantitatively small with respect to the entirety of the product can assume significance. The hearing officer in the MFC decision considered why the attention of the expert for the Applicant was “particularly drawn to the [temperature] controller.” The hearing officer commented that the controller was likely because the controller was “set against the contrast of an otherwise utterly plain rectangular frame of the front door, but also because of his expectation of its likely functionality.”
Under the Australian Designs Act, “[A] visual feature may, but need not, serve a functional purpose”. There is no bar to functionality per se. For the hearing officer the question arose of how to gauge the impact of that functionality in applying the required “standard of the informed user.”
The hearing officer referred to several declarations filed from relevant users that indicate their attention would be drawn to this feature [the temperature controller]. “My own assessment similarly is that users’ attention would be drawn to the feature – because of its potential functionality.” (emphasis added).
The hearing officer referred to Astra/Zeneca AB case concerning an inhaler device for asthma sufferers. The inhaler included an element which indicated the number of remaining “puffs”. The inhaler was identical to the cited prior art apart from this single ‘indicator’ feature. The visual presence of that functional indicator was sufficient to render the design distinctive.
The hearing officer concluded that “the ‘informed user’ would treat the controller as visually more important than the shape of the fins…In my application of the standard of the informed user, I would consider that the controller has a significant impact on the overall impression such that the Design is distinctive over the prior art.”
To conclude, the Australian Designs Office will allow reference to the actual product, and particularly to confirm the significant prominence of features that may not appear particularly prominent in the design representations.
Further, quantitatively small features on a product can provide distinctiveness, particularly if the prevailing industry standard, compliance with other products for fit or restrictions in freedom to be creative render small changes significant.
And functional features can themselves render a design distinctive.
Registered designs can be a powerful anti-copying tool, if they can be certified. The examination process can be as difficult as for patents, though the issues are of course different. Seek professional advice before taking action. Most important of all, make sure the design representations properly reflect the appearance of the product being protected, and use a SOND to identify features of significance over the prior art.
by Mark Pullen