The value and power of registered design protection has been confirmed by the United States Federal Circuit Court of Appeal in its decision of 18 May 2015, upholding an earlier decision, that certain of Samsung’s smartphones infringed Apple’s patented designs directed to its iPhone.

This decision highlights the value of securing registered design rights for the ornamental appearance of a product, particularly in the US, with Apple reportedly set to receive damages in the order of US$548 million.

Full credit must be given to Apple as it recognised, from the outset, that the full commercial value of its iPhone resided not only in its functionality but also in its aesthetic appearance as an article of manufacture.

In Australia, and many jurisdictions around the world, this distinction is also recognized by governments which offer registered intellectual property systems with distinct and separate regimes to protect both functional and aesthetic elements of a product.

The “patent” system serves to secure rights in the functional aspects of a new and inventive product or process.

The “registered designs” system serves to secure rights in the ornamental appearance of a new product or article of manufacture.

These systems help businesses be rewarded for the investment required in researching, developing and manufacturing new products.

Apple took advantage of both systems to protect key functional aspects of its iPhone via the patent system, and to protect certain ornamental design features of its iPhone via the “registered designs” system.

Apple had three registered designs (known in the US as “Design Patents”) at issue in this case, each claiming certain design elements embodied in the iPhone as shown below.

The first design focuses on design elements on the front flat clear face of the iPhone:

Click here to view the image.

The second design extends to the bezel of the iPhone:

Click here to view the image.

The third design claims “the ornamental design for a graphical user interface for a display screen or portion thereof”:

Click here to view the image.

There is commonly an overlap between functional and ornamental features with some elements serving dual purposes.  Samsung contended that it should not have been found liable for infringement of the above designs owned by Apple because any similarity was limited to the basic or functional elements in the designs.  That is, Samsung argued that the form of those elements which are dictated by their functional purpose should be ignored in their entirety when determining the scope of the design.  The Federal Circuit did not agree and held that United States case law does not support Samsung’s position.

The position is similar in Australia with the Designs Act explicitly stating a visual feature may, but need not, serve a functional purpose.  This case provides a clear example of the commercial value associated with the aesthetic appeal of a product, quite separate from the functionality of that product.  The registered designs system can be advantageously used to capture this commercial value.

At Shelston IP we have had considerable success for our clients in terms of obtaining “take down” notices for on-line sales offerings, based on infringement of Australian certified designs. In this regard, registered designs are particularly useful, as most on-line agencies easily understand and recognise design rights, whereas patent rights, for example, are more complicated to evaluate.

Registered design protection is available in the majority of Australia’s trading partner countries, and businesses that rely at least in part on the appearance of its products to distinguish them and attract customers, would be well advised to follow in Apple’s footsteps of registering the appearance of new products in an effort to capture the full commercial valuable of a new design.

The novelty rules, scope of protection, costs, remedies and filing requirements for registered designs currently vary quite substantially between different jurisdictions. Accordingly, it is highly recommended that a suitable IP protection strategy, including designs, be considered as early as possible in the development phase.