Protecting the appearance of your new products – 1 May 2011
Design registration can be used to stop others copying the appearance of your new product and is often recommended if:
- the appearance of the product is important (e.g. many consumer goods);
- the appearance of the product is dictated by function;
- there is a significant risk of direct copying; and/or
- a substantial investment has been made in the new design (e.g. new dies ordered).
Applying for design registration is cheap and straightforward. It involves filing “representations” of the design and brief text with the Designs Office. The “representations” are usually line drawings.
Design registrations cover products which are “substantially similar in overall [visual] impression” to what is shown in their representations.
This leads to a critical question – What does “substantially similar in overall [visual] impression” mean? Or put another way – how much change is required to avoid infringement? Myths such as “10%” are not helpful. The answer depends on a range of factors and varies depending on the type of product.
The coverage of a design registration must be assessed from the point of view of an “informed user” of the product and particular regard must be given to any features highlighted in the text of the design registration. The freedom of the creator of the design to innovate must also be considered.
In a Court decision[1] concerning truck tail lights the registered design shown in figure 1 (below) was found to cover the product shown in figure 2. The owner of the registered design stopped its competitor selling the lights and was awarded substantial damages.
The design registration of figure 1 included text highlighting the lack of visible screws. The infringing light of figure 2 included screws which were visible but were small, black and countersunk into the black surround. The Court reasoned that the screws, even if given particular regard, did not change the overall visual impression of the light enough to avoid infringement.
In contrast to this decision, it was successfully argued before the Designs Office[2] that the design registration of figure 3 did not cover figure 4. Figures 3 and 4 show plastic extrusions for covering the edges of electrode plates for refining copper. The outside profiles of the extrusions shown in figures 3 and 4 are identical. The only differences are in the internal profiles.
It was argued that little weight should be given to the outside profile of the extrusions because the outside profile is dictated by design considerations (it must fit within another component) so the creator has no freedom to innovate in this area. It was also argued that particular regard should be given to the internal profile because the “informed user” concentrates on the internal profile to distinguish between different extrusions when loading the electrode plates.
For a design registration to be valid it must not cover anything that was publicly known before the initial application for registration was filed. The same test to determine the coverage of the registration is applied when assessing validity or infringement. Indeed the decision relating to figures 3 and 4 was in regard to the validity of a manufacturer’s new design registration (figure 3) in view of their older design registration (figure 4).
Due to the requirement to not cover what was publicly known, a broader interpretation is not always better for the owner of a design registration. A broadly interpreted design registration is more likely to cover something that was publicly known and so less likely to be valid.
When filing a design application it is possible to manipulate the breadth of coverage by carefully selecting the words in the application and the format of the representations. This is something to discuss with your patent attorney.
It is important to keep the design secret until an initial application for design registration is filed. It is also important to keep in mind that design registration is about appearance. Design registration will not stop competitors copying functional details if they can do so in a product that looks different. If functional details are important patent protection may be appropriate. Patent protection can be pursued alongside design registration.
[1] LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 (18 December 2008)
[2] Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007)
NB – Another facet of this case relates to the quality of the images. As you will see, figure 1 is unclear. Nonetheless the Court found the images to be acceptable because when viewed online a user could zoom in to see the details clearly.
