Applicants of Australian registered design applications have the option of filing a Statement of Newness and Distinctiveness.  This article will examine how the protection afforded by an Australian registered design can be maximised by a Statement of Newness and Distinctiveness that suits the specifics of the design to be protected.

An Australian design application can be filed with a Statement of Newness and Distinctiveness (SND), although it is not compulsory to do so.  In a broad sense, the SND can be used to specify whether the design protection being sought relates to external shape/configuration (i.e. 3D features) or to pattern/ornamentation (i.e. 2D features).  This can avoid a competitor arguing non infringement of a design for a 3D article by relying on different surface decoration or vice-versa.  However, the SND can also be used to more closely direct the design protection towards the design’s most salient features and/or minimize the effect of less important or trivial features.

By way of background, it is not possible to “disclaim” features in an Australian design application (e.g. the handle of a cup).  Nor is it possible to omit features from the drawings, as there is a requirement to show the entire article to which the design is applied.  The only exception to the latter requirement is when a design is for a separately manufactured part of an overall “complex” product.  With these limitations in mind, the SND can be used to emphasize or highlight the most salient features by identifying those features in the SND.  The effect of such a tailor made SND is twofold.

Firstly, when considering registrability (i.e. validity) of a design, an assessment is made as to whether the design is identical to, or substantially similar in overall impression to, a prior art design.  Secondly, 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.  Importantly, when making these assessments, Australian design statute requires more weight to be given to similarities between the design/prior art or design/infringing product than to their differences.  However, the assessment can be influenced by including a SND identifying the particular visual features of the design that are considered to be new and distinctive.  Australian design statute then requires particular regard to be given to those features identified in the SND when making the aforementioned assessments.  For example, if the features differentiating a design from the prior art are in the SND, then the design is more likely to be valid.  Similarly, if a competitor’s product has the features identified in the SND, then it is more likely to be considered an infringement.

The new and distinctive features can be identified in a SND in several different ways.  If the features are readily identifiable in a drawing by name (e.g. the neck of a bottle) then they can be simply referred to by that feature’s name.  Alternatively, features can be annotated in one or more drawings as features A, B, C etc and then referred to in the SND accordingly.  As a further alternative, new and distinctive features can be shown in solid lines with the remaining features being shown in dashed/phantom lines.  This last approach is particularly suitable for design applications claiming convention priority from foreign applications that were filed in broken line format drawings, such as is common in The United States.  This drawing format also meets the requirement of showing all features of the article, as the features shown in phantom lines are still considered to be shown.

It is possible to amend or add a SND to a pending Australian design application.  However, practically speaking, this can be difficult as Australian design applications proceed quickly (3-4 weeks) to registration after only a formality examination.  Once registration has occurred it is no longer possible to amend or add a SND.  This timeframe can be extended by filing an incomplete design application in order to force the issuance of a formality examination report, thus delaying registration.

Upon receiving instructions to file a design application, it is our practice to ask for the features to be identified in the SND.  If one or more such particular features can not be identified, then we would recommend at least filing a SND to identify all features of "shape and/or configuration" (for a 3D design) or “pattern and/or configuration” (for a 2D design).