News & Insights

If you are a business manufacturing or supplying goods in Australia, you are likely familiar with the importance of protecting your brands by trade mark registration.

But what about protecting the visual appearance of the actual products themselves? That way, you can stop someone from copying your product and selling it under their brand. In this context, the visual appearance can be the shape of the product, a pattern or decorative features.

An inexpensive and powerful, but less utilised, form of intellectual property protection is a ‘design right’, which seeks to protect the overall visual appearance of new and distinctive products. “Newness” and “distinctiveness“ are both threshold elements to obtain an enforceable design registration.

A recent case before the Federal Court has shone a spotlight on what it takes for a design to be considered “new and distinctive”.

case summary

In the recent case of Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd (2021) AIPC 92-590; [2021] FCA 208, the Federal Court was tasked with considering an application for the revocation of a registered design.

Key Logic Pty Ltd (Key Logic) owns the registered design over a product called the “solar bollard”.

criteria for registration

Under the Designs Act 2003 (Cth), a design will be a “registrable design” if it is “new and distinctive” when compared with any “prior art base”. A “prior art base” consists of all designs published or publicly used prior to the application for design registration.

Importantly, a design will be “new” unless identical to a design that forms part of the prior art base for the design. It will be “distinctive” unless it is “substantially similar in overall impression” to a design that forms part of the prior art base.

arguments for revocation of registration

In this case, Sun-Wizard Holding Pty Ltd argued that the registered design right over the “solar bollard” was not validly registered because:

1. it was neither new nor distinctive, when compared with an earlier version of the same design; and
2. it was not new, because information about the product was circulated by email (meaning it was “published”) a few weeks before Key Logic applied to register the design.

The Court dismissed the first argument on the basis that the registered design featured a “conical shaped reflector or diffusor” which was missing from the earlier version of the design. It followed that the registered design was not identical, not substantially similar in overall impression to the prior design.

The Court also dismissed the second argument and found that the information was not “published”, but rather only emailed to members of the “Certified Installer Network” who had existing confidentiality obligations. Therefore, the design was still “new and distinctive”.

relevance to your business

This case is an important reminder of when a design will (or will not) be considered “new and distinctive” and, consequentially, eligible of registration.

Ultimately, even small differences from the “prior art base” will enable a design to be registrable. The breadth of the registration might be more limited as a result, but it will certainly stop direct copiers from replicating products.

While disclosure through the emails in this case was found not to be disclosure, it is much safer to make the application before any disclosure or use.

If you are interested in learning more about protecting designs in Australia, see our previous insight article about the current protection regime and its recently proposed legislative amendments.

If your business has developed a product and is unsure how to best protect its design or visual appearance, please contact Macpherson Kelley’s Intellectual Property team.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.