Australian design registrations – the Statement of Newness and Distinctiveness

Australian design applications may optionally include a Statement of Newness and Distinctiveness (SOND). The scope of protection provided by an Australian design registration can be significantly influenced by the SOND, as will be discussed in this article.

How and when to include a Statement of Newness and Distinctiveness

If a SOND is desired, the SOND should be included with the application at lodgement. In practice, there are limited opportunities to amend the SOND, primarily because Australian design applications normally proceed to registration shortly after lodgement. It is not possible to amend the SOND (or add a SOND) after the design is registered. For this reason, a carefully crafted SOND should be included in the application from the outset.

What is the Statement of Newness and Distinctiveness?

A SOND is an optional statement provided by the applicant to identify particular features of a design that the applicant holds out as being new and distinctive.

The tests for validity in the Australian Designs legislation (Section 19) and also infringement (Section 71) both require an assessment of whether a design is “identical to, or substantially similar in overall impression” to another design.

The legislation requires that more weight is given to similarities than to their differences.

In particular, if a person (for example an examiner or a judge) is required to decide whether a design is “substantially similar in overall impression” to another design, if the design registration includes a statement of newness and distinctiveness identifying particular visual features as new and distinctive, that person must:
have particular regard to those features; and
if those features relate to only part of the design – have particular regard to that part of the design, but in the context of the design as a whole.

For this reason, features of the design which are identified in the SOND will play an important role during an assessment of validity or infringement.

What is the advantage of using a Statement of Newness and Distinctiveness?

The SOND can be used to direct the scope of protection to the most commercially salient aspects of the design, whilst minimising the impact of design features that are common in the art. This means that the applicant can focus the scope of protection in respect of certain new and important features of the product.

How to prepare a Statement of Newness and Distinctiveness

In general terms, the SOND can be directed to shape and/or configuration if the design primarily relates to three dimensional features. Alternatively, the SOND can be directed to pattern and/or ornamentation if the design primarily relates to two dimensional features. It is also possible to direct the SOND to both two and three dimensional features.

Other ways to use the Statement of Newness and Distinctiveness

Beyond a general focus on 2-dimensional or 3-dimensional features, The SOND can alternatively be customised to focus the design protection in respect of specific features of the product and/or to reduce the relevance of certain design features considered less important by the applicant, such as design features that are common in the art.

Important considerations when preparing a Statement of Newness and Distinctiveness

In Australia, it is not possible to explicitly disclaim features of the product shown in the drawings, as is possible in other jurisdictions such as the United States. Furthermore, it is necessary that the design shows the entire article, so it is not possible to omit portions of the product from the drawings.

Some examples of different Statements of Newness and Distinctiveness

1.       Overall 3-dimensional features – general shape and/or configuration

Design registration 201613671 was recently successfully enforced at the Federal Court of Australia, against an infringer. The design registration concerns a microphone and has the following SOND, which is directed to the overall 3-dimensional aspects of the product:

“Newness and distinctiveness is claimed in the features of shape and/or configuration of a microphone as illustrated in the accompanying representations.”

Such a SOND is directed to the overall 3-dimensional appearance of the product, such that no particular feature (or group of features) is held out as being particularly salient, and protection is sought for the product as a whole.

 

2.      Overall 2-dimensional features – General pattern and/or ornamentation

Design registration 201815270 relates to a cleaning wipe. The SOND defines:

“Newness and distinctiveness is claimed in the features of pattern and/or ornamentation of a cleaning wipe as illustrated in the accompanying representations.”

This SOND is directed to the overall 2-dimensional aspects of the product, such that protection is sought for the 2-dimensional aspects of the product as a whole.

 

3.      Drawings include regions of both Continuous lines and broken lines

The design can be directed toward the features depicted in continuous lines. This has an effect similar to disclaiming features. Although the features depicted in broken line are still part of the design, they are to be considered as less relevant than the portions depicted in continuous line. This approach is often used for applications based on foreign priority applications, such as United States design patents, having disclaimed features. However, it is important to note, that the features in broken lines whilst less important, cannot be completely disclaimed.

For example, design registration 201617247 includes the following SOND:

“Newness and distinctiveness is claimed in the features of shape and/or configuration of an industrial impact safety glove as depicted in the accompanying drawings and having particular regard to the features depicted in continuous lines.”

 

4.      Identify certain features of the design as being particularly important

This may fulfil the goal of highlighting new aspects of the design which represent visually important differences over the prior art. The features may be verbally described in the SOND, and may be related to reference numerals or other such markers identified on the drawings.

For example, in registration 365976 regarding a paving block, the SOND defines:

“The newness and distinctiveness of the design resides in the shape and/or configuration of the paving block shown in the representations having particular regard to the shape/contours of the sides of the blocks.”

 

5.      Identify certain features of the design as being unimportant

This can be used to partially disclaim portions of the design, such as features which are common in the art, or features such as logos and brands which would otherwise unnecessarily restrict the scope of protection.  For example, design registration 335326 regarding a refrigerator includes the following SOND:

“Newness and distinctiveness resides in the shape and configuration of a refrigeration appliance as depicted in the accompanying drawings and that the portions of the cabinet visible in the underneath view and the rear view are to be disregarded when considering the scope of this design as they do not form part of this design.”

 

6.      Indicate that a certain dimension is indefinite

This has the effect of not limiting the design to a particular dimension, and may be relevant to designs having a constant cross-sectional profile such as extrusions and frames. This serves the purpose of not limiting an extrusion (or other such component) to a specific length, or ratio of length to height/width etc.

For example, Australian design registration 202215995 includes the following SOND: “Newness and distinctiveness is claimed in the shape and/or configuration of a door or window frame member as shown in the accompanying representations. The door or window frame member can have any length, as indicated by the break lines in the representations.”

 

7.      Indicate that a pattern is repeating

Similar to the above, this has the effect of not restricting the design to a specific deployment of a repeating pattern, such that protection relates to a single unit of the pattern, regardless of how it is applied to a surface.

This may be relevant to two dimensional designs for products such as wall-paper or fabrics which may have a pattern that repeats in both length and width directions. Similarly, this may be applied to three dimensional patterns, such as the tread of a tyre.

For example, Australian design registration 351378 includes the following SOND “Newness and distinctiveness resides in the side view of a tyre created by the visual appearance of the repeating pattern of apertures in the tyre sidewall illustrated in solid lines in figures 3 and 4 of the accompanying drawings”.

 

Summary

It should be noted that whilst the SOND can be used to narrow or broaden the scope of protection, this can have both positive and negative effects on the overall protection, depending on what features are present in an alleged infringing product, or a prior art publication. Prior to submitting an application, the SOND can be customised to differentiate over a known prior art document. In contrast, the features present in an alleged infringing product are unlikely to be known at the time the application is submitted.

If you would like any further information about design registrations in Australia, please contact us.

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