IP SPOTLIGHT 14 April 2021

Fortunately, according to Australian design legislation, the fact that overall impression of the design is dictated by external factors (such as governmental regulations) permits that newness and distinctiveness of the design be determined exclusively in the light of the factors that can be controlled by the designer and all features that are essential to the product to undertake their function may be discarded 2 . Thus, it is appropriate to assess newness and distinctiveness on the basis of factors which are under the designer’s control. Also, more weight has to be given to differences or variations; this result in that more consideration must be given to the details that make up the difference between two similar designs than relying exclusively on the overall impression of the design under dispute. Therefore, at least for heavily regulated products, an interesting scenario may be formed in which a plurality of designs are protected even though they, at first glance for the general public, appear to be substantially similar in overall impression. This is particularly true provided the guidelines below are followed: – the differences and variations between the designs should be located at a significant location toward which the eye of the informed user is drawn to – the features that make up the differences need to be referred to in the statement of newness and distinctiveness – it is essential to talk to your preferred Australian patent firm such as WRAYS to ensure it is done right.

This continuous evolving - occurring at an amazing rapid pace never seen before - of the external appearance of existing products has brought about that protecting the external appearance of the improved products may become difficult or even impossible. In fact, in the light of current design legislations, the improved product when compared against the existing products (e.g. the product that has been improved) may be considered to be substantially similar in overall impression and therefore not protectable via design protection. This is particularly true when the improvements made to the existing products (resulting in the improved product) are such that, for the general public, not necessarily the overall impression of the existing products is changed. A particular circumstance where an apparently substantially similar design may be protected via design protection is when heavily regulated products are the ones that are being improved. A particular example of heavy regulated products are street posts of, for example, the type having an upper top signage for displaying information for advertisement or commercial purposes. With the advent of LED screens of a relatively large magnitude there has been the obvious choice of replacing the old-fashioned plexiglass screens including neon lights common to conventional street posts with these LED screens. The question that arises is whether an enforceable design right could be obtained for a street post which have been changed by only replacing the plexiglass screen with a LED screen. As will be explained below, there may be an option of gaining enforceable Australian design rights provided the top signage is at a location (such as mounted on the street post) that draws the attention of the informed user 1 . Also, preferably, some changes should be made to the frame that once supported the plexiglass screen and will receive now the LED screen. The fact that a particular product is heavily regulated results in that designer’s freedom to innovate is greatly limited. For example, in street posts their poles need to be inherently long bodies, their naming signs need to extend perpendicularly from poles, located at specific heights, and oriented at specific azimuth angles about the posts.

PROTECTING THE IMPOSSIBLE – THE SUBSTANTIALLY SIMILAR DESIGN IN AUSTRALIA In order to keep up with market demands, industries have teams of designers continuously improving products that are currently in the marketplace. This is common place in this day and age of rapidly evolving technologies and with consumers wanting nearly instant gratification. An example of such improvements can be varying the external appearance of products of competitors with the objective of eroding the competitor’s market share.

PETER HILLE Senior Associate

1 The informed user is the hypothetic individual created to ensure an objective test is applied during assessing whether an enforceable design right may be granted to a particular design – see Australian Manual of Design Examination @ D09.4.6.2 – Informed User. 2 Australian Manual of Design Examination @ D09.4.5. Freedom of the creator of the design to innovate.

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