As it is customary in other jurisdictions, especially the United States, to illustrate “claimed” parts of a design in solid lines and other “disclaimed” parts of the design in broken lines, this article will examine an approach to deal with such cases in Australia.
Under Australian law, a design relates to the “overall” appearance of a (whole) product resulting from one or more visual features of the product. A design cannot relate only to a part of a product, unless that part is made separately from the rest of the product.
Furthermore, when considering registrability (i.e., validity) of a design, an assessment is made as to whether that design is identical to or substantially similar in “overall impression” to a prior art design. Similarly, when considering infringement, an assessment is made as to whether the alleged infringing product is identical to or substantially similar in “overall impression” to the registered design.
To determine the “overall impression” of a design in the above assessments, all visual features of the product shown in the representations (i.e., the drawings) are taken into at least some account, irrespective of whether a visual feature is illustrated in broken or solid lines. Unlike other jurisdictions (e.g., the United States), there is nomechanism in Australia to explicitly “disclaim” visual features of the product shown in the representations.
In light of the above, it is not currently possible to obtain design protection in Australia for only an integral part of a product by purposely illustrating that part in solid lines and the rest of the product in broken lines. However, in such cases, it is possible to carry out the following steps when filing a design application in Australia in an attempt to obtain the broadest form of protection available:
- Use a product name directed to the whole product shown in both solid and broken lines in the representations. This will identify, prima facie, that the design is related to a product, and not an integral part of the product, as required.
- Include a Statement of Newness and Distinctiveness (SoND) identifying the visual features illustrated in solid lines.
In Australia, a SoND is optionally included with a design application to identify new and distinctive visual features of a design that are considered important to the overall impression of the design. Although numerous factors are considered in any registrability/infringement assessment, the inclusion of a SoND has the ability to influence these assessments such that particular regard (i.e., more significance) is given to any visual feature identified.
Accordingly, the inclusion of the SoND that identifies the visual features illustrated in solid lines will give those visual features more significance over the visual features illustrated in broken lines in any registrability/infringement assessment. Whilst the visual features illustrated in broken lines will still have some effect on the scope of a subsequent registered design, this approach would be the closest equivalent to “disclaiming”.