DRiV IP, LLC - [2024] ADO 3

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Registered design numbers 201914249 and 201914251 (class 14-02) – both being in respect of an Electronic device including a display screen; Display screen - in the name of DRiV IP, LLC

Delegate:

Benjamin Goldsworthy

Representation:

John Hogan of FB Rice Pty Ltd

Decision:

2024 ADO 3

Designs Act 2003 (Cth) – Examination of designs under section 63 –practice of viewing a product ‘at rest’ – interpretation of the meaning of ‘visual features of a product’ and ‘product’ – designs found to be not distinctive over the prior art base – proposed amendments not allowable or ineffective – registrations of each design to be revoked

Background

This proceeding concerns two designs (‘Designs’) which have been registered under the Designs Act 2003 (Cth) (‘Act’).[1] The Designs were entered on the Register of Designs with the following particulars:
[1] Unless I otherwise specify, throughout these written reasons a reference to a section of an enactment is a reference to a section in the Designs Act 2003 (Cth).
Design number: 201914251
Owner: DRiV IP, LLC (‘Owner’)
Product: Electronic device including a display screen; Display screen
Filed: 30 July 2019
Priority date: 31 January 2019 (‘Relevant Date’)[2]
[2] The Owner provides documents which I accept as evidence of the filing in the convention country of the United States of America of an application to register a design patent less than 6 months before filing an application to register the Designs in Australia. Accordingly, by s 27(1)(b) and reg 3.06(2) of the Designs Regulations 2004 (Cth) the priority date of the Designs is deemed to be the day when the basic application was made.
Convention details: Number: 29/678998; Country: United States of America; Filing Date: 31 January 2019
Statement of newness and distinctiveness: Newness and distinctiveness of the design reside in features of pattern and/or ornamentation of a logo on the product, those features being shown in solid unbroken lines in the accompanying representations, wherein the broken dash-dash lines of even length illustrate portions of the product or environmental subject matter that form no part of the design (‘SoND’)
Representations: see Schedule 1.
---
Design number: 201914249
Owner: Owner
Product: Electronic device including a display screen; Display screen
Filed: 30 July 2019
Priority date: Relevant Date
Convention details: Number: 29/678995; Country: United States of America; Filing Date: 31 January 2019
Statement of newness and distinctiveness: this is the same as the SoND
Representations: see Schedule 2.

Examination background

On 3 April 2023, the Owner sought examination of the Designs under s 63(1). During the examination, the Examiner raised the same citations against each of the Designs by written reports. I reproduce the citations at Schedule 3 to these written reasons (‘Citations’). When examining the Designs the Examiner considered the products pictured in the representations of the Designs to be ‘at rest’, an example depiction of which I set out at Schedule 4 (‘Blank Representation’).
After considering submissions from the Owner’s Attorney, the Examiner maintained the Citations which meant that the Designs are not new and distinctive. The Owner requested to be heard in that event. On 4 July 2024, the Owner filed written submissions prepared by John Hogan of FB Rice Pty Ltd (‘Owner’s Submissions’). I am to decide this matter as a delegate of the Registrar of Designs (‘Registrar’) and do so with reference to the examination reports, written responses and all submissions made by the Owner. This process does not amount to a review of the examination, though I do refer to the examination history of the Designs and research reports in determining this matter.
In summary, I am satisfied that all of the Citations, other than that dated 29 March 2019, were published in a document prior to the Relevant Date.
I note that other than making submissions on the issue of how the Designs should be examined, the Owner offers no effective argument that when compared with the prior art base, if considered ‘at rest’, the Designs are new and distinctive. I am satisfied that the Designs, considered ‘at rest’, are substantially similar in overall impression, thus not distinctive, when compared with the prior art base, for example when compared with the prior art dated 22 January 2019 which includes the following design:

Accordingly, if the Blank Representation is the appropriate construction of the Designs at examination, it follows that the Designs are not distinctive and must be revoked.
The core question to be answered in this matter is how the examination of the Designs should be approached. That is, whether the Designs should be examined ‘at rest’ such that the circular image and/or DRIV text appearing in the representations of the Designs is effectively ignored. Currently the practice of the Registrar is to examine designs ‘at rest’, meaning that for the purposes of the comparison with prior art, a product will be taken to be switched to an off state. An obvious implication of this is that images that may be displayed on a screen when switched on, are not visual features for the purposes of any comparison with prior art.[3] The basis for this approach was explained in Apple Inc (‘Apple’) where a delegate of the Registrar found that the visual matter shown as having been displayed on the screen is not viewed as a visual feature which is ‘of’ the product per se.[4]

Discussion

[3] Designs Examiners’ Manual of Practice and Procedure, Part 9.4.

[4] [2017] ADO 6 (Hearing Officer Richards) (‘Apple’).

Relevant legislation and materials

Under the Act a person may file an application in respect of a design.[5] Relevantly, a design application may be in respect of one design in relation to one product or one design that is a common design in relation to more than one product.[6] The word ‘design’ is defined in s 5 as being the overall appearance of the product resulting from one or more visual features of the product.
[5] Section 21.
[6] Section 22.
I set out relevant sections of the Act below:
5 Definitions
In this Act, unless the contrary intention appears:
artistic work has the same meaning as in the Copyright Act 1968.
...
corresponding design, in relation to an artistic work, has the same meaning as in Division 8 of Part III of the Copyright Act 1968.
…
design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.
Note: See also section 8.
...
product has the meaning given by section 6.
...
visual feature has the meaning given by section 7.
...
6 Definition of product
(1)    For the purposes of this Act, a thing that is manufactured or hand made is a product (but see subsections (2), (3) and (4))
(2)    A component part of a complex product may be a product for the purposes of this Act, if it is made separately from the product.
(3)    A thing that has one or more indefinite dimensions is only a product for the purposes of this Act if any one or more of the following applies to the thing:
(a) a cross‑section taken across any indefinite dimension is fixed or varies according to a regular pattern;
(b) all the dimensions remain in proportion;
(c) the cross‑sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios;
(d) it has a pattern or ornamentation that repeats itself.
(4)    A kit which, when assembled, is a particular product is taken to be that product.
7 Definition of visual feature
(1) In this Act:
visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product.
(2) A visual feature may, but need not, serve a functional purpose.
(3) The following are not visual features of a product:
(a) the feel of the product;
(b) the materials used in the product;
(c) in the case of a product that has one or more indefinite dimensions:
(i) the indefinite dimension; and
(ii) if the product also has a pattern that repeats itself—more than one repeat of the pattern.
8 References in this Act to a design
In this Act, a reference to a design is a reference to a design in relation to a product.
Whilst I need not set out the contents in full, I note that throughout these written reasons I also refer to the 74th report of the Australian Law Reform Commission which was tabled in the Australian Parliament (‘ALRC Report’).[7] The ALRC Report contains recommendations to modernise and simplify Australian designs before enactment of the Act. These recommendations were aimed at improving the rights of those who design the innovative visual features of manufactured products. The Government response to those recommendations resulted in the Act.
[7] Australian Law Reform Commission, Designs, Report No 74 (1995) (‘ALRC Report’).
Relevantly, of the ALRC Report states:
In the Commission's view a screen display is a use of a product - the monitor or other computer hardware - it is not itself a product. Nor is it the visual appearance of any product. The visual appearance of the monitor or other computer hardware is the product at rest not in use. The fact that the screen display is generated by a computer program does not make it the visual appearance of that program any more than a printed page is the visual appearance of the printer. It follows that a screen display does not qualify for protection as a design either as the design of a computer program or on any other ground. In the Commission's view this is appropriate and no special provision needs to be made for screen displays either confirming or qualifying this.[8]
[8] Paragraph 4.32 (emphasis added).
Recommendation 20 in the ALRC Report recommended that, ‘[s]creen displays should not be able to be protected as designs. It is not necessary to include any special provision in the new designs legislation to confirm this’. The Australian Government responded to this recommendation with an unqualified acceptance.

Background to approach of the examination ‘at rest’

The Owner states that the reasoning in Apple relies on the reasoning in Comshare Incorporated (‘Comshare’)[9] and submits that the reasoning in Apple is based on a flawed interpretation of the Act. It also submits that I should be cautious of any reliance on the ALRC Report in relation to the interpretation of the words of the Act. The Owner refers me to a number of decisions, which I now summarise.
[9] [1991] ADO 2 (Delegate Welsh).
I start with Apple. In Apple the delegate interpreted s 7, where it defines ‘visual feature’, as including only ‘the shape, configuration, pattern and ornamentation of the product’.[10] The delegate was not convinced that an image that appears on a display screen would normally be considered a quality or attribute of a display screen as such. The delegate considered the ordinary meaning of the word ‘of’ in its particular statutory context as requiring the visual features being ‘qualities and attributes’ of the product. The matter the subject of the design was found to be not ‘of’ the product. This was not merely because those features are transient or non-durable features. It was because of the statutory construction of the effects of the words and their definition, including the effect of the word ‘of’. To the extent that the matter was viewed as requiring confirmation, or that the words of the Act were ambiguous, the delegate supported their position by the findings and recommendations in the ALRC Report.
[10] Original emphasis.
Comshare, which was referred to by the delegate in Apple, concerned designs for an article entitled ‘computer screen’. Monopoly was claimed in the pattern or ornamentation of a computer screen as shown in the representations. The representations showed screens with graphic and textual information. At that time, s 4(1) of Designs Act 1906 (Cth) (‘1906 Act’) defined ‘design’ as being ‘features of shape, configuration, pattern or ornamentation applicable to an article…’. The delegate found that the designs were not ‘applicable to’ an article within the meaning of the 1906 Act. The delegate also rejected the argument that graphic and textual matter appearing on a computer screen was a design within the meaning of s 4(1) of the 1906 Act on the basis that the transitory nature of the display did not give one individual and specific appearance for the article. Further, the delegate found that designs which were not ‘durable or permanent’ did not amount to designs under the 1906 Act.
The delegate in Comshare relied, in part, on Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (‘Firmagroup’) where the High Court of Australia found that the meaning of ‘design’ expressly excludes ‘a method or principle of construction’ and this is ‘implied in the true conception of a design in the earlier statute law’.[11] The High Court found that for there to be a ‘design’ under the 1906 Act, what was required was ‘one particular individual and specific appearance’. The High Court supported the position that a feature which does no more than identify a general characteristic of shape is a method or principle of construction and is therefore outside the protection of the 1906 Act.[12] To this end the High Court also endorsed the statement that, ‘…[i]f it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general, and amount to a method or principle of construction’.[13] I have no reason to doubt the approach and the result in Comshare to the extent it refers to Firmagroup. Regardless, whilst Apple refers to Comshare it does not necessarily turn on the same reasoning. Apple is based on the statutory interpretation of the words of the Act.
[11] Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd [1987] HCA 37, [5] (Wilson, Brennan, Deane, Dawson and Gaudron JJ) (‘Firmagroup’).
[12] Malleys Ltd v J W Tomlin Pty Ltd [1961] HCA 77 (Taylor, Menzies and Owen JJ) (‘Malleys’).
[13] Firmagroup (n 11) [5]. See also, Malleys ibid.
Regardless, the Owner also submits that the decision in Altoweb Inc (‘Altoweb’)[14] should be followed instead of Apple and Comshare in considering whether the Designs should be examined ‘at rest’. Altoweb concerned an application under the 1906 Act for a design for ‘a computer display screen’. The Deputy Registrar in Altoweb found that, ‘there is no issue to be taken with the application, nor should the application be refused, based solely on any contention that the pattern is transient, ie present at some times and not others, provided the other requirements of [the 1906 Act] are satisfied’.[15] However, the Deputy Registrar also found that the application could not proceed to registration for lack of suitable subject matter (ie, non-compliance with the definition of ‘design’). That is because they considered a ‘computer display screen’ to not be an ‘article’ as required by the 1906 Act.
[14] [2002] ADO 2 (Deputy Registrar Portelli) (‘Altoweb’).
[15] Altoweb ibid [24].
Specifically, the Deputy Registrar in Altoweb noted that:
… the pattern of the design is displayed on the computer screen by software that is totally independent of the computer screen as manufactured and as sold. The display of a pattern on a computer screen via software that is independent of the screen, i.e. is not inherently built into the screen, does not meet the requirement that the features of the design are in the finished article.[16]
[16] Ibid [37].
The Owner submits that where a pattern is displayed on a computer screen by software that is inherently built into the screen, this would meet the requirement that the visual features are of the product.
The Deputy Registrar in Altoweb referred to Apple Computer Inc v Design Registry[17] which concerned a design application made to the United Kingdom Designs Registry (‘UK’) for the type of icon which is said to be built into a computer and not the type which appear temporarily when a computer program was loaded. The icons were switched on and produced by the operating system of a computer. Initially, the UK refused to register the design on the basis that, ‘the reliance on computer software to “apply” the design selectively to a computer screen did not equate to the design being applied by an industrial process or means’. Furthermore, the UK concluded that user interfaces as such were not ‘articles’ within the meaning of the Registered Designs Act 1949 (UK) (‘RDA’). The applicant appealed to the Registered Designs Tribunal and the Designs Registry did not appear.
[17] [2002] FSR 38 (Jacob J) (Designs Review Tribunal). This was also applied recently in UST Global (Singapore) Pte Ltd v The Controller of Patents and Designs (2023) AID/2/2019 (Ravi Krishan Kapur J) in relation to the Designs Act 2000 (India).
On appeal absent the assistance of a contradictor, Jacob J found that the RDA required that features claimed be features in the finished article. Based on s 1(3) of the RDA, the key questions were: (1) was there an ‘article’; and (2) was there a feature or pattern or ornament ‘applied to an article by any industrial process’. Justice Jacob found that a ‘computer with an operating system that displays the icons concerned’ was an ‘article’ for the purposes of RDA and that there was feature of pattern so applied by an industrial process and the appeal was allowed. I note that Apple Computer Inc v Design Registry and Altoweb refer to KK Suwa Seikosha's Design Application (‘Seiko’)[18] where the court held that icons, consisting of a design to be applied to a display panel for an electric watch were registrable under the RDA. Seiko appears to be concerned with a scenario involving twisted nematic liquid crystal display screens, such as those found in early digital wristwatches.
[18] (1982) RPC 166 (Falconer J).
All the decisions to which the Owner refers me, other than Apple, concerned the language of the 1906 Act and the RDA which is different to that found in the Act. After considering the cases to which the Owner refers me, I am satisfied that the ALRC Report is an extrinsic material which should be given careful consideration in the interpretation of the Act when appropriate, as per the considerations set out in the Acts Interpretation Act 1901 (Cth) (‘AIA’), which I discuss further below.

Meaning of ‘product’

An important part of the Owner’s Submissions is that the word ‘product’ in the Act includes non-physical matter, such as an icon or a graphical user interface (‘GUI’) per se. It develops this argument by then submitting that for example, if a GUI or an icon as such, are each an eligible ‘product’ under the Act, then it would be improper for a registered design that specifies the product as being, for example, a ‘graphical user interface’ to have the visual features of that GUI disregarded, because the GUI’s appearance is unaffected by whether the product is ‘at rest’.
These submissions partly require me to assess whether, for example, a GUI, would be registrable under the Act in its own right. The delegate in Apple briefly dealt with such a submission about the meaning of the word ‘product’, noting that s 7 states that a ‘design’ for the purposes of the Act is a design in relation to ‘a product’[19] and that screen display matter, if a visual feature(s), would be a visual feature(s) in relation to any number of different products.[20] This result appears to be consistent with the decision in Microsoft Corporation[21] where the delegate found that the word ‘product’ in the Act requires a thing bearing visual features and that a type font would not qualify as such:
…I do not think that the present design shows a product bearing visual features. Rather, the representations show a collection of visual features intended to be applied to unspecified products in unspecified arrangements.[22]
…
In my view, the present design does not disclose a product bearing visual features. It only discloses visual features…[23]
[19] Section 8.
[20] Apple (n 4) [19].
[21] [2008] ADO 2 (Hearing Officer Herald).
[22] Ibid [14].
[23] Ibid [16].

The Owner submits that there is a more general meaning to the word ‘product’, as appearing in the Act, than just a thing which is manufactured or hand made. The Owner submits that s 6 should be read as a deeming provision. That is, s 6 should not be read as an exhaustive definition and its effect is that it simply clarifies that a thing which is manufactured or hand made is included in the meaning of the word ‘product’. The Owner refers me to the dictionary definition of a ‘product’ as appearing in the Macquarie Dictionary being, ‘a thing produced by any action or operation, or by labour; an effect or result’.[24] The Owner asserts that this is the meaning which should be attributed to the word ‘product’ in the Act.
[24] Macquarie Dictionary (9e, 2023) ‘product’.
The starting point for determining the legal meaning of words in an enactment should be the words of the enactment and their ordinary meaning.[25] There must be a reason to depart from the literal or grammatical meaning of a provision and I should strive to give meaning to every word of a provision.[26] In Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd, Tamberlin J observed that it, ‘is appropriate to adopt a “liberal interpretation” to intellectual property legislation, including the [Copyright Act 1968 (Cth)], and to avoid a narrow, literal approach specific to a particular technology or unduly limited to the state of the art as at the date when the relevant provisions were passed.’[27] However, his Honour added that it is, ‘also important to ensure that the result contended for reasonably arises from the language selected by parliament.’[28] In interpreting a provision of an enactment, the interpretation that would best achieve the purpose or object of the enactment (whether or not that purpose or object is expressly stated in the enactment) is to be preferred to each other interpretation.[29]
[25] Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28, [69]-[71] (McHugh, Gummow, Kirby and Hayne JJ) (‘Project Blue Sky’); Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue [2009] HCA 41, [47] (Hayne, Heydon, Crennan and Kiefel JJ).
[26] Project Blue Sky ibid [71] and [78].
[27] [2000] FCA 1273, [65] (‘Aristocrat Leisure’) referring to Sega Enterprises Ltd v Galaxy Electronics Pty Ltd [1996] FCA 761 (Burchett J).
[28] Aristocrat Leisure ibid. See also, Computer Edge Proprietary Limited v Apple Computer Inc (1986) 161 CLR 171, 187-188 (Gibbs CJ) and Australasian Performing Rights Association Ltd v Telstra Corp Ltd (1995) 131 ALR 141, 155 (Sheppard J, dissenting).
[29] AIA s 15AA.
Section 5 is titled ‘Definitions’ and provides in part, ‘[i]n this Act, unless the contrary intention appears… product has the meaning given by section 6’.[30] The presence of the phrase ‘...unless the contrary intention appears…’ purports to prescribe in plain words of necessary intendment where a person reading the Act will (absent a contrary intention) find the meaning of the word ‘product’. Had the legislature intended there to be such an open definition of product, as asserted by the Owner, it would have used open wording such as ‘includes’ in s 6. By contrast, see the inclusive definition of ‘visual feature’ in s 7. Further, a thing which is manufactured or hand made would come within the description of the word ‘product’, on the ordinary meaning of the word, without the need for any deeming provision to make that so. As such, I proceed on the basis that the words of s 6 are what provides the reader of the Act the meaning of the word ‘product’ wherever it sits in the Act, unless a contrary intention can be found in any specific instance.
[30] My emphasis added.
Within the definition of product in s 6, is the word ‘manufacture’ and the phrase ‘hand made’. One dictionary definition of the word ‘manufacture’ in the Macquarie Dictionary is that it refers to the verb involving, ‘the making of goods or wares by manual labour or by machinery, esp. on a large scale’.[31] The phrase ‘hand made’ is defined therein as ‘made by hand, not machine’.[32] The High Court of Australia in National Research Development Corporation v Commissioner of Patents commented that the word ‘manufacture’ as ‘a word of everyday speech generally’ conveys the idea of making tangible goods.[33] In everyday speech generally, a person would not say that they ‘manufacture’ software, GUIs, icons or graphical symbols as such. Nor would one naturally prefer to say that these are made by hand. These things are perhaps more likely to be referred to as having been ‘created’, ‘authored’ or ‘designed’, which are tellingly not the kind of words chosen by the legislature. The word ‘manufactured’ is in the past participle form. The ordinary meaning of the words ‘manufactured or hand made’ in the context of s 6 appear to be confined to the making of a physical thing, involving a working of a material into a physical form for use.
[31] Macquarie Dictionary (Online, accessed 3 October 2024) ‘manufacture’.
[32] Macquarie Dictionary (Online, accessed 3 October 2024) ‘handmade’.
[33] [1959] HCA 67 (Dixon CJ, Kitto and Windeyer JJ) (emphasis added). The High Court there was considering the effect of the words ‘manner of new manufacture’ for the purposes of the Patents Act 1952 (Cth), which I contrast with the words ‘manufactured or hand made’ as contained in the Act.
The meaning of a provision in an enactment must be determined by reference to the language of the instrument viewed as a whole.[34] This will include the subsections in s 6 and all other sections of the Act.[35] All subject matter referred to in ss 6(2) to (5) appear to refer to physical things. For example, s 6(2) refers to a ‘component part’ of a ‘complex product’ which is made separately. Subsection 6(3) states that things which have indefinite dimensions may be products, subject to certain conditions. Where the dimensions of a thing are indefinite, but do not meet those conditions, it may otherwise not be a product for the purposes of the Act. Section 6(4) refers to ‘kits’ which require assembly. On the interpretation that the Owner asserts, how non-physical things, for example for an icon, would interact with these subsections is not clear. All these subsections relate to subject matter which involves, for example, the assembly of physical things. They reinforce that for the purpose of the Act a product refers to a physical thing.
[34] Project Blue Sky (n 25) [69] (McHugh, Gummow, Kirby and Hayne JJ); Metropolitan Gas Co v Federated Gas Employees’ Industrial Union [1925] HCA 5; 35 CLR 449, 455 (Rich and Isaacs JJ).
[35] AIA s 13.
The provisions of the Act outside of s 6 also appear to confirm that the word ‘product’ for the purposes of the Act refers to physical things, or at least that visual features in the absence of a physical thing would not be included in the meaning of that word.[36] I turn to some specific examples and note that almost all the actions listed in ss 10 and 71 as the exclusive rights and infringing actions relate to a form of exploitation performed on apparent physical things.[37] An important right is the right to ‘make or offer to make a product, in relation to which the design is registered, which embodies the design’.[38] It is unclear how matter appearing on a display screen such as a graphic image or an icon, as such, can ‘embody’ visual features of shape and configuration in a product for the purposes of the Act.[39] Furthermore, in ordinary language, and in this legislative context, one would not say that they ‘make’ or ‘import’ something when dealing with a GUI or icon. These things are not ‘made’ other than perhaps at the point they are first created. More accurately put, a GUI, or icon, is first ‘made’ or ‘authored’, after which it might only be ‘copied’ or ‘reproduced’. Section 72 refers to ‘repairs’, ‘decayed or damaged’ component parts and replacement of ‘incidental items’—qualities and functions generally not associated with the digital image. The definition of ‘complex product’ in s 5 states that these words mean, ‘at least 2 replaceable component parts permitting disassembly and re‑assembly of the product’. These words appear to refer to things which permit physical connection.[40] Overall, the language of the Act is cast so as to apparently concern physical things to the exclusion of non-physical things.
[36] AIA s 15AB(1).
[37] Ariosa Diagnostics Inc v Sequenom Inc [2021] FCAFC 101, [260] (Middleton, Nicholas and Burley JJ) where the Court, concerning words in the Patents Act 1990 (Cth), commented that, ‘[t]his language, and particularly notions of making, hiring, disposing of and keeping, most naturally connote acts done with tangible things’ (emphasis added).
[38] Section 10(1)(a).
[39] See, Seafolly Pty Limited v Fewstone Pty Ltd [2014] FCA 321 (Dodds-Streeton J) (‘Seafolly’); Polo/Lauren Co LP v Ziliani Holdings Pty Ltd [2008] FCAFC 195 (Black CJ, Jacobson and Perram JJ) (‘Polo’).
[40] Aristocrat Technologies Australia Pty Limited [2021] ADO 1, [28] (Hearing Officer Barbey) (‘Aristocrat Technologies’).
I also agree with the reasons of the delegate in Apple where they state that a registered design is for ‘a product’ and a screen display would involve an appearance of potentially multiple products. This is because a screen display per se as such is not physical and can be incorporated into any number of products. Accordingly, since I have found that the definition in s 6 is exhaustive, then (absent any contrary intention – none of which have been drawn to my attention, nor are any apparent to me) the likely ordinary meaning of the word ‘product’ again does not refer to non-physical things.
To the extent that it might have been necessary to consider them, extrinsic materials to the Act also confirm the meaning of the word ‘product’ as referring to physical things, or at least that a GUI or an icon would not be included in that word.[41] Furthermore, to the extent that there is ambiguity about the definition of ‘product’, as contended by the Owner, it may also be appropriate to have recourse to extrinsic materials.[42] These extrinsic materials include the Explanatory Memorandum to the Designs Bill 2003 (‘EM’) and ALRC Report which support such an interpretation.
[41] AIA s 15AB(2)(a).
[42] AIA ss 15AB(1) and 15AB(2)(b) and (2)(e).
The EM states that the definition of the word ‘product’ is, ‘…intended to emphasise the industrial nature of design protection, and to exclude naturally occurring things from design protection’.[43] This statement indicates that the definitional role of s 6 involves a level of exhaustion to the meaning and the exclusion of some subject matter. The regulation impact statement, as part of the EM, in discussing the rationale for the legislation notes that, ‘the Registrar accepts an extremely diverse range of products including light fittings, bicycles, extrusions, farm machinery, textiles, toys, fashion garments and statues from applicants involved in a variety of industrial sectors.’[44] All these are examples of things bearing visual features.
[43] EM, 26.
[44] EM, 3
The ALRC Report also notes that the definition of ‘product’ is intended to exclude naturally occurring things from protection and emphasise the industrial nature of design protection.[45] The ALRC Report adds that a water jet of a fountain would be excluded from the then draft definition of product.[46] This also suggests that things of a temporary or transient nature would be excluded from protection. The ALRC Report thus further supports an interpretation which does not include screen display items, such as GUIs or icons, within the word ‘product’ and refers to the reasons in Comshare.[47] I view the ALRC Report as indicating that the apparent status quo was to be preserved in the repeal of the 1906 Act and enactment of the Act and that no substantial or specific changes would be required to achieve this. The ALRC Report also indicates that the intention of s 6 is to control the subject matter over which an application for registration of a design may be made. Overall, I agree with the summary of this background that the delegate provides in Aristocrat Technologies where they noted that, ‘[t]he new design definition [occurring in s 6] was aimed at excluding “naturally occurring things from design protection” but did not substantially widen the scope of things that could attract design protection.’[48]
[45] Recommendation 10.
[46] ALRC Report, [4.9].
[47] ALRC Report, [4.30]-[4.32] and Recommendation 20.
[48] Aristocrat Technologies (n 40) [18] (citations omitted).
The underlying purpose of the Act is to foster innovation and reward the same, by offering a temporary monopoly to people that come up with new and distinctive visual features of products. However, the Act seeks to achieve this subject to the contouring of the word ‘product’ which refines the subject matter qualifying for protection.[49] This is confirmed by the text of the Act, the EM and ALRC Report.
[49] The interpretation of the word ‘product’ supplied by the Owner also may have interesting questions for the objects and purposes of the copyright/design overlap provisions, including ss 18 of the Act and s 74, 75 and 77 in Part III, Division 8 of the Copyright Act 1968 (Cth) (‘Copyright Act’). In State of Escape Accessories Pty Limited v Schwartz [2022] FCAFC 63, [9] (Greenwood, Nicholas and Anderson JJ) the Court stated that, ‘[t]he policy behind the overlap provisions is to ensure that works which are functional and intended for mass production in three dimensional form should not be afforded protection under [the Copyright Act]’ (emphasis added). In Polo (n 39) [54] the Full Federal Court referred to the policy of the legislation stating that, ‘it is plain, we think, that the definition of “corresponding design” is intended to cover a situation where an artistic work is embodied in three dimensions’. See also, Seafolly (n 39) [451]. In applying s 18, should one differentiate between a product in three-dimensional form and a one which is in a two-dimensional form which depicts objects with shape and configuration on a display screen? Would, for example, a wholly digital propagation of more than 50 purported non-physical digital products appearing only on a screen imperil a corresponding design registration in relation to a physical product, where no physical thing has been made to the design? Would a mass supply of, for example, a non-physical digital product amount to industrial application such that it imperils copyright infringement actions because of s 77 of the Copyright Act? Would matter appearing on a screen such as a graphic image or an icon, as such, ‘embody’ visual features of shape and configuration in a product for the purposes of the Act? Whilst these may present further problems for the Owner’s preferred interpretation of the word ‘product’, it has not been necessary for me to explore and answer these questions.
I note that the Owner briefly refers me to the laws of overseas jurisdictions and submits that an interpretation of the term ‘product’ as inclusive of things such as GUIs and icons would be consistent with the United Kingdom and European Union (‘EU’) legislation. These jurisdictions employ the word ‘product’ in their legislation for the protection of registered designs. The definition of ‘product’, in both jurisdictions, importantly provides an indicative list in the definition of ‘product’ clarifying that certain subject matter is included. The law in the EU for example, provides that, ‘“product” means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs’.[50] The United Kingdom provision similarly provides that, ‘“product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product’.[51] The approach in these jurisdictions, to the extent that it is relevant, underscore the very necessity of words additional to the words ‘product’, and ‘manufactured or hand made’, to take the legal meaning of the words beyond the ordinary meaning referring to physical things that I have already discussed above.[52]
[50] Article 3(b) Council Regulation (EC) No 6/2002 (emphasis added).
[51] Registered Designs Act 1949 (UK) (emphasis added).
[52] Douglas v Tickner [1994] FCA 252, [43]-[44] (Carr J); Transport Accident Commission v Hogan [2013] VSCA 355, [47] (Macaulay AJA and Redlich, Priest JJA).
For these reasons, my reading of the word ‘product’ in the Act is that it does not refer to non-physical things, such as icons or GUIs, in the way asserted by the Owner. Accordingly, this argument does not assist the Owner where it asserts that the Designs should not be examined ‘at rest’.

Conclusions on the issue of ‘at rest’ examination

The Owner’s Submissions do not take the question of whether the Designs should be examined ‘at rest’ much further than the submissions which were made in Apple. One difference between this matter and that in Apple is the presence of the additional linework indicating an overall device expanded beyond a rectangular shape. Even so, the delegate in Apple considered a display screen to qualify as a product. On an ordinary reading of the Act the icons as depicted in the representations to the Designs would not be visual features ‘of’ the product(s) specified. For completeness I also note that it is uncontroversial that there are tangible products specified in each of the Designs. I am satisfied that the Designs should be examined ‘at rest’. When so examined the Designs are not distinctive when compared to, at least, the prior art dated 22 January 2019.
I also note that at examination it would not be a reasonable and ordinary interpretation of the Designs to construe the highlighted features as being non-transitory (for example laminated or physically printed onto the display screen) and thus proceed with the examination on the basis that the visual feature of the product are permanently visible. The representations of the Designs appear to show a non-permanent icon displayed on a device, which when powered in an ‘off’ state would cease to be visible. Such an interpretation would also not accord with what appears to be present in the basic applications of the Designs filed in the United States of America. For completeness I also note that the SoND together with the product name and representations of the Designs do not assist in reaching any other interpretation.

Proposed amendments

Section 66 provides that:
66 Amendment of registration
(1) This section applies if the Registrar is satisfied, in the course of examining a registered design, that a ground for revocation of the registration of the design has been made out.
(2) The Registrar must notify the registered owner of the design to that effect.
(3) The registered owner of the design may request that the Registrar amend the Register in such a way that the ground for revocation is removed.
(4) A request under subsection (3) must be made in the manner prescribed by the regulations.
(5) The Registrar must consider and deal with the request in the manner prescribed by the regulations.
(6) An amendment must not be such as to:
(a) increase the scope of the design registration; or
(b) alter the scope of the registration by the inclusion of matter that was not in substance disclosed in the original design application, representations or other documents.
The Owner requests an amendment to the product name of each of the Designs to:
Electronic device including a display screen on which a logo is visible at least when the device is used as intended; Display screen on which a logo is visible at least when the screen is used as intended
In the alternative the Owner also requests an amendment to the product name of each of Designs as follows:
Electronic device including a display screen on which a logo is visible at least when the device is used as intended, the device having all things necessary for the logo to be visible on the screen; Display screen on which a logo is visible at least when the screen is in use, the screen having all things necessary for the logo to be visible on the screen

Further, in the alternative the Owner also requests an amendment to the product name of each of Designs as follows:
Electronic device including a display screen on which a logo is non-transiently visible; Display screen on which a logo is non-transiently visible
Further, in the alternative the Owner also requests an amendment to the product name of each of Designs as follows:
Electronic device including a display screen on which a logo is non-transiently visible, this device having all things necessary for the logo to be visible on the screen; Display screen on which a logo is non-transiently visible, the screen having all things necessary for the logo to be visible on the screen
The proposed amendments all have at least one problem. Some proposed amendments do not overcome the issues as required by s 66 because they do not overcome the difficulties the Designs face because of the practice of examination of designs ‘at rest’. Furthermore, some of the proposed amendments would alter the scope of the Design by the inclusion of matter that was not in substance disclosed in the original design applications, representations or other documents.[53]
[53] Microsoft Corporation, [16] (n 21). See also, Ethyl Corporation's Patent (1972) RPC 169 (Lloyd-Jacob J).
The suggested language of ‘non-transient’ is somewhat obtuse– non-transient is not the same thing as permanent – as such the issues identified above likely would apply to such phrasing. This would anyways alter the scope by inclusion of matter not impliedly or expressly present in the original application. Even if the features are permanently visible, the proposal to amend the product name would shift the fundamental nature of the product away from what on an objective reading of each of the applications as a whole, as showing a screen with a transient icon to one which would include a permanently displayed icon.
Replacing what now appears as a feature temporarily displayed upon the screen of a handheld device, with a fixed image stuck to or embedded in some permanent way on that same screen would also likely make certain actions not originally an infringement, amount to infringing conduct and thus increase the scope of the design registrations.[54] That is, the amendment(s) could lead to a person infringing the rights of the Owner of the Designs, whereas the registrations as they appear now would not have had this effect. If not indicating permanent visibility then the proposed amendments to the product name do not overcome the issues the Designs face with an ‘at rest’ examination.
[54] The Distillers Co Ltd’s Application (1953) 70 RPC 221, 223 (Lloyd-Jacob J).
Accordingly, I refuse all amendment requests present in the Owner’s Submissions.

Decision

I am satisfied that examination of the Design ‘at rest’ is the correct approach in this matter. Since the Designs are substantially similar in overall impression to at least one of the Citations, the Designs were not distinctive at the Relevant Date, and must be revoked.
Absent an appeal within the appeals period, the Designs will be revoked. If the Registrar is served with a notice of appeal from this decision before the time of revocation, I direct that revocation shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the examination should be in accordance with the Court’s order or direction.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

3 October 2024

Schedule 1

Schedule 2

Schedule 3

Prior art	Date of publication
19 March 2018
22 January 2019
28 September 2017
17 September 2015
10 March 2017
28 August 2007
26 January 2018
29 March 2019
20 January 2015

Schedule 4