A recent decision (Apple Inc.  ADO 2) is a timely reminder for attorneys and applicants of the importance of ensuring that the differences are especially mentioned in the Statement of Newness and Distinctiveness for an Australian registered design. The design at the center of this case was Australian Design 202115002 and, during examination, a number of examination reports were issued alleging that the Design lacked distinctiveness. The Applicant (Apple Inc) requested a hearing.
What is the Statement of Newness and Distinctiveness?
A Statement of Newness and Distinctiveness is a statement that highlights the particular features of the design that are new and distinctive. The features identified in the Statement of Newness and Distinctiveness will be given particular regard in the context of the design as a whole.
A Statement of Newness and Distinctiveness cannot be amended after the design has been registered, and typically occurs shortly are filing. As such, if an appropriate Statement of Newness and Distinctiveness is not provided or prepared at filing then we are unable to fix this shortcoming.
Prior art designs comparison
The design in question related to a ‘case’ (to house and charge wireless headphones) and was accompanied by the following Statement of Newness and Distinctiveness:
Newness and Distinctiveness is claimed in the features of shape and configuration shown in solid lines in the representations.
The representations provided in the present application were of a case in an open configuration and a closed configuration. The prior art raised against the present application was also of a case that contained representations of the closed configuration, did not contain representations of the open configuration, and did not indicate an appearance for the interior of the case. The prior art was also the Applicants previous design (Australian Design 202011411). The exterior representations of the present design and the previous design appeared to be identical. As such, the question of distinctiveness would fall upon the interior of the case shown in the present application.
The Applicant submitted that there were two core issues: the manner in which the prior art should be interpreted given that no information is provided in relation to the interior of the case, and the relevance of the interior of the case.
The Applicant contended that the Statement of Newness and Distinctiveness relates to the visual features that are shown in the representations. As such, the interior features (shown in the figures) of the case contribute to the overall impression of the design and made the design distinct from the prior art.
The Hearing Officer, whilst agreeing with the Applicant, noted that the interior is only part of the case and contended that the exterior of the case would be more important in the sense ‘that there is a wide and almost unencumbered freedom on the part of the creator to design a case exterior’. Furthermore, the Hearing Office noted that the Statement of Newness and Distinctiveness did not mention anything specific in relation to the interior and as such did not give the interior any additional weight.
Ultimately, the design was found to be not distinctive over their own design and not registrable.
This case reminds us of the importance of ensuring that the differences of the design are highlighted in the Statement of Newness and Distinctiveness. In the present case, had the Statement of Newness and Distinctiveness mentioned particular regard to the interior of the case then a different outcome may have occurred. Upon providing instructions to filing a design application claiming priority from a previous design, we recommend ensuring that the distinctive features of the design should be highlighted or at least mentioned in the instructions to your attorney, so that they can prepare an appropriate Statement of Newness and Distinctiveness.
Please do not hesitate to contact Michael Buck IP if you have any questions or queries in relation to design rights or a design application. As mentioned above, if you are claiming convention priority from a foreign design then it may be possible to tailor the Statement of Newness and Distinctiveness at filing.