Australian design applications may optionally be filed with a Statement of Newness and Distinctiveness (SND). The protection afforded by the design registration can be significantly influenced by the features presented in the SND, as discussed in this article.
In general terms, the SND may be directed to shape and/or configuration if the design primarily relates to three dimensional features. Alternatively, the SND may be directed to pattern and/or ornamentation if the design primarily relates to two dimensional features. It is also possible to direct the SND to both two and three dimensional features.
Alternatively, it is possible for the SND to be customised to focus the design protection in respect of specific, salient features of the product and/or to reduce the relevance of certain design features considered less important by the applicant.
The tests for validity in the Australian Designs legislation (Section 19) and infringement (Section 71) both require an assessment of whether a design is “identical to, or substantially similar in overall impression” to another design.
When making such an assessment, the legislation requires that more weight is given to similarities than to their differences. However, the assessment can be influenced by the SND.
In particular, if a person is required to decide whether a design is “substantially similar in overall impression” to another design, assuming the design application includes a statement of newness and distinctiveness identifying particular visual features as new and distinctive, that person must:
have particular regard to those features; and
if those features relate to only part of the design – have particular regard to that part of the design, but in the context of the design as a whole.
Accordingly, any features which are identified in the SND may play an important role during an assessment of validity or infringement.
Important considerations when preparing a Statement of Newness and Distinctiveness
In Australia, it is not possible to explicitly disclaim features of the product shown in the drawings, as is possible in other jurisdictions such as the United States. Furthermore, it is necessary that the design shows the entire article, so it is not possible to omit portions of the product from the drawings.
However the SND provides a mechanism for applicants to focus their protection and direct the registration to particular, salient features of the design.
Some scenarios where the SND can be used effectively:
Direct the design to features depicted in continuous line when there are portions identified in broken line.
This has an effect similar to disclaiming features. Although the features depicted in broken line are still part of the design, they are to be considered as less relevant than the portions depicted in continuous line. This approach is often used for applications based on foreign priority applications, such as United States design patents, having disclaimed features.
Identify certain features of the design as being particularly important
This may fulfil the goal of highlighting new aspects of the design which represent visually important differences over the prior art. For example, a design for a fork could be directed to the handle. The features may be verbally described in the SND, and possibly related to reference numerals or other such markers added to the drawings.
Identify certain features of the design as being unimportant
This can be used to partially disclaim portions of the design, such as features which are common in the art, or features such as logos and brands which would otherwise unnecessarily restrict the scope of protection.
Indicate that a certain dimension is indefinite
This has the effect of not limiting the design to a particular dimension, and may be relevant to designs having a constant cross-sectional profile such as extrusions. This serves the purpose of not limiting an extrusion or other such component to a specific length, or ratio of length to height/width etc.
Indicate that a pattern is repeating
Similar to above, this has the effect of not restricting the design to a specific deployment of a repeating pattern, such that protection relates to a single unit of the pattern, regardless of how it is applied to a surface.
This may be relevant to two dimensional designs for products such as wall-paper or fabric which may have a pattern that repeats in both length and width directions. Similarly, this may be applied to three dimensional patterns, such as the tread of a tyre.
It should be noted that whilst the SND can be used to narrow or broaden the scope of protection, this can have both positive and negative effects on the overall protection, depending on what features are present in an alleged infringing product, or a prior art publication.
Furthermore, the SND cannot be amended after registration, and registration typically occurs within 2-3 months of lodgement, so it is important that the SND is drafted thoughtfully from the outset.
The specific wording included in the SND should be carefully crafted taking into account factors which are known at the filing date, such as developments in the prior art base.
Please do not hesitate to contact us with any questions.