When filing a design application in Australia, the applicant has the option of providing a ‘statement of newness and distinctiveness’ to highlight particularly unique features of the design.
If such a statement is filed, the features specifically identified as being new and distinctive must be particularly considered when assessing whether the design is substantially similar in overall impression to:
- prior art during examination or in a validity challenge, and
- a potentially infringing product for infringement purposes.
This does not mean that all other features of the design are ignored. Rather, the features specified in the statement are given greater weight when considered in the overall context of the design. In contrast, a design with no such statement is assessed with reference to the visual appearance of the design in its entirety with no feature being given more or less regard than another. The prominence of the unique features in relation to the rest of the design also plays a role.
The statement is therefore something of a double-edged sword because, while it promotes novelty over prior art, it does somewhat ‘nail one’s colours to the mast’ and potentially limit enforceability over close-copy products that omit or modify such specifically identified features.
With this in mind, if a competitor copies the design including the new and distinctive features referred to in a statement, the prospects of finding infringement are greater than would otherwise be the case. Conversely, if a competitor copies the design and omits or modifies the stated new and distinctive features, it will be more difficult to establish design infringement. In both circumstances, the overall impression conveyed by the designs remains a key factor.
The statement can also be used to identify more general aspects of a design. For example, where a design as a whole is considered new and distinctive, a general statement directed to the visual features of shape and configuration, or pattern and ornamentation can be used.
There is no provision in the Designs Act 2003 that limits the scope of wording in the statement. Consequently, statements are often made in negative terms, to identify generic features to be disregarded for the purposes of considering the design. For example, a statement of newness and distinctiveness might direct a viewer to disregard features shown in the representations in phantom or using broken or dashed lines. Similarly, if the representations are in colour for convenience only, the statement is sometimes used to specify that colour is to be disregarded. Such negative statements do not fully achieve their desired effect as they are typically interpreted to mean all other features of the design should be given greater regard. For this reason, the same effect can in many cases be achieved using an alternative statement drafted in positive terms.
Consideration as to whether a statement is required, along with appropriate wording, must be determined before filing. Applications proceed to registration within a few weeks of filing, and a statement of newness and distinctiveness cannot be amended, or deleted, after registration.
Whether or not a statement of newness and distinctiveness is used requires careful consideration. There is no ‘one size fits all’ approach. We recommend that any specific features of a design requiring more emphasis relative to other features for novelty purposes are identified to us prior to filing a design application so that the need for and wording of a statement can be determined ahead of any filing deadline.