Australian Design Applications proceed to Registration soon after clearing formality and administrative procedures at IP Australia and usually within a few months of filing. This is because Design Applications do not undergo substantive examination prior to registration. However, in order to be enforceable in Australia, the Design Registration must first be certified by way of a post-grant examination. Examination requires the Office to have regard to section 65(2)(a) of the Designs Act 2003 (“Act”) which creates a ground for revocation of a registration if the “design is not a registrable design”.
Apple Inc.’s (“Apple”) latest battle Down-Under, in Apple Inc.  ADO 1, concerned the distinctiveness of Apple’s edge-to-edge computer monitors, for which Apple had obtained Design Registration No. AU334543. Apple, wishing to enforce its Design Registration requested examination during which grounds of revocation were raised by the Examiner. Apple requested a Hearing before a Delegate of the Registrar of Designs and was allowed to file further evidence.
At issue in this case, was the visual feature of the interface between the display face and the remainder of the monitor. During examination and submissions, the pertinent feature of the Design for the purposes of assessing its distinctiveness has been described as its “frameless” or “borderless” or “edge-to-edge” front (display) face.
Although not explicitly required, Australian Design Applications are generally accompanied by a Statement of Newness and Distinctiveness (“the Statement”), which sets out the features of the Design that are considered by the Applicant to be both new and distinctive, as applied to an article. These are separate considerations which must be assessed.
In this case, Apple’s Statement read as follows:
“Newness and distinctiveness of the present design resides in those features of shape and configuration of the design illustrated in solid lines in the accompanying representations, including the screen edge design shown illustrated in figure 10 (sic). In the representations, the fine shading lines illustrate translucency and the broken lines illustrated (sic) contour, not pattern and ornamentation”.
Problematic in this case was the use of two different types of broken line in the Design drawings. Broken lines were used to illustrate contours in the monitor and broken outlines to illustrate the remainder of the drawing of the overall Design of the monitor. Therefore, the absence of any reference to broken outlines in the Statement resulted in the Delegate paying little attention to those lines in the determination of the newness and distinctiveness of the Design as applied to Apple’s monitor.
In the revocation action, the Delegate cited Apple’s own “LED Cinema Display” monitor, which was obtained from the “WayBack Machine” internet archive resource (www.archive.org) as a prior disclosure against the Design Registration. The prior disclosure showed “a display screen having three principle parts – a screen, a supporting body, and a stand. The screen is housed within the body such that the body forms a visible rim or frame to the screen which is seen in front view and in all front perspective views. The screen becomes invisible to the viewer when the product is in side view and through all perspective views”.
In light of the interpretation of the Statement, the question to be considered was whether: “an ‘unframed’ display screen is distinctive over… the prior disclosure… differing immaterially from the Design in all ways other than the fact that the display screen is framed by the display body.”
Evidence was submitted in the form of photographs of the monitor of the citation to contrast with the newness and distinctiveness of the Design. However, the Delegate considered such materials to be irrelevant and called them “amplifying influences” used to amplify the differences between the Design in question and the prior disclosure by use of colour, magnification, orientation and the like. Thus, photographs used to amplify the contrast in colour between the metallic rim and the black screen glass of the citation were disregarded. In any event, the Delegate considered the colour aspects of the Design to be irrelevant and therefore unable to qualify as visual features for consideration.
In determining whether the Design is distinctive in Australia, the Delegate must first determine who is the “Informed User”. The Informed User is a person who is familiar with the product to which the Design relates. The Informed User should pay particular attention to the features described in the Statement. As a result of his/her interpretation of the Statement, the Informed User should not have regard to broken lines in the drawings, which are to be given little weight for newness and distinctiveness considerations.
The Delegate defined the Informed User as one whom he would regard as an ordinary consumer of electronic goods, familiar with computers and computer related products, who takes an interest in new products of that kind released to market either as a potential purchaser of those goods or as a keen amateur computer enthusiast. Apple championed a manager of a large Australian electronics retailer as representative of “the Informed User” and submitted into evidence a Declaration made by him. However, the Delegate considered a person in a managerial capacity to be far removed from the day-to-day sale of display screens or similar goods. Therefore, he considered that any Declaration provided by such a person would not be persuasive.
To make matters worse, the Declaration in evidence consisted of statements that were simple observations that could have been made by anyone and provided commentary on features upon which the Declarant had no apparent qualification to comment. Furthermore, the Declaration was unclear as to whether newness or distinctiveness was being discussed. Also, the Declaration concentrated on the functional aspects of the Design rather than on the aesthetic features. As a result, the Delegate considered the Evidence to be “sorely faulty”. The lack of any really useful statements to assist in the determination of the newness and distinctiveness of the Design contributed to the revocation of the Design Registration.
The take-home lesson from this case is that the Statement filed in support of an Application for Design Registration should be clear and should refer to all the aspects of the Design, which are to be considered for the purposes of newness and distinctiveness. Furthermore, in selecting an expert witness to provide supporting evidence, care should be taken to select an appropriate person, who actually uses the article to which the Design has been applied. Most importantly, any statements made by the expert should comment on the aesthetic features of the Design and not at all on functional features, which are more appropriately protected by patent. Should the expert proffer any off-hand remarks that he/she appears unqualified to make, then evidence regarding any additional qualifications that the Declarant may have, should be provided in order to support such remarks.