Turning the Screw: Protecting designs without breaking the bank

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For IP holders seeking to certify a registered design, the effort and resources that could be needed to overcome any objections raised by the Examiner or a third party can seem like a significant barrier. However, a recent win for our client RemoveRite Inc. demonstrates that a well argued case can successfully protect even small refinements in a design without excessive client investment. The case also showed that the functional refinements of a product as well as the purely aesthetic can be an important factor to consider in arguing in favour of a design registration.

Design applications generally proceed to registration shortly after being filed, as examination is not required for design registration. As such, design applications are generally only subject to a formalities check, upon which the design is registered. However, in order to enforce a registered design, the design must be certified, i.e. a certificate of examination must be issued. The Applicant or a third party can request examination of a registered design.

In the matter of Design Registration Nos. 335711 and 335712 in RemoveRite Inc. [2013] ADO 7 a request for Examination was made for the subject designs, and during examination the Examiner alleged that the Designs were not new and distinctive. The subject designs are a refinement of an earlier design by the Applicant, and the Examiner contended that the Designs were substantially similar in overall impression to the Applicant’s earlier design. The subject design registrations related to screws having a hexagonal, elongated head.

The Applicant, represented by us, requested the matter be heard.

Hearing

The Designs Act requires that when considering whether a design is substantially similar in overall impression to another design, the notional opinion and perspective of a person who is familiar with the product to which the design relates must be applied. This is known as the standard of the informed user.

At the hearing, the Applicant argued that the informed user would be familiar with screws and how they are used and, in particular, be aware that the functionality of a screw is an important feature when determining the applicability of a screw to a particular task. As such, the informed user would be drawn to the functionality of the screws when considering the overall visual impression of the screws.

The Applicant chose not to provide any evidence from or relating to an informed user. However, the Delegate was able to apply his own general knowledge, and accepted the Applicant’s submission that an informed user, such as a builder, would be drawn to the functionality of the screw in determining the applicability of the screw to a particular task.

Furthermore, the Applicant argued that the freedom of a designer to innovate is restricted due to technical constraints relating to the technical operation of a screw, and as such more weight has to be given to small differences or variations of the screws. Again, the Delegate concurred.

Finally, the Delegate considered that “in qualitative terms, the distinctive features of the Designs differ from the Prior Disclosure and I have concluded that an informed user would have regard to the importance of those features in the context of the Designs as wholes.” As such, the Delegate directed that the designs be certified.

The decision confirmed that even relatively small functional refinements of a product can be protected by a design registration in Australia. In particular, it showed that the relevant legal test considering an informed user will have regard to the importance of functional features of a design, and as a result should give more weight to such functional elements when considering a design as a whole.

Furthermore, while the decision reinforces the importance of the hypothetical informed user, lack of evidence from such an informed user is not always fatal. In the present case, the Delegate was able to draw conclusions regarding the informed user from the Applicant’s submissions, together with the Delegate’s general knowledge in the area.

Formal publication of this Decision by the Designs Office is expected in early 2014.

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