GEA Westfalia Separator Group GmbH
[2025] ADO 1
•17 June 2025
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Registered design number 202215837 (class 14-02) – a display screen with graphical user interface – in the name of GEA Westfalia Separator Group GmbH
Delegate: | Benjamin Goldsworthy |
Representation: | Lester Miller of Foundry Intellectual Property Pty Ltd |
Decision: | 2025 ADO 1 Designs Act 2003 (Cth) – examination of design under section 63 – practice of viewing a product ‘at rest’ – interpretation of the meaning of ‘visual features of a product’ and ‘product’ – design not distinctive over the prior art base – registered design to be revoked |
Background
This matter concerns a design (‘Design’) which has been registered under the Designs Act 2003 (Cth) (‘Act’).[1] The Design was entered on the Register of Designs with the following particulars:
Design number: 202215837
Owner: GEA Westfalia Separator Group GmbH (‘Owner’)
Product: A display screen with graphical user interface
Filed: 3 October 2022
Priority date: 7 April 2022 (‘Relevant Date’)
Convention details: Number: 008929814-0004; Country: European Union Intellectual Property Office (EUIPO); Date: 7 April 2022
Representations:see Schedule 1 (‘Representation’).
[1] Unless I have otherwise specified, throughout these written reasons a reference to a section of an enactment is a reference to a section in the Designs Act 2003 (Cth).
The application for the Design contained the following statement of newness and distinctiveness:
The new and distinctive features are the data layout pattern and ornamentation of the display screen shown in the representations, including the colouring, but wherein the proportions of colours on the ring charts and bar chart may vary, as may the numbers on the readouts, the location shown on the map, the machine serial numbers and the company name in the top left corner (‘SoND’).
Examination background
On 3 August 2023, the Owner sought examination of the Design under s 63(1). During the examination, the Examiner raised citations against the Design in a written report (‘Citations’) which I extract at Schedule 2. Upon examination of the Design the Examiner considered the product pictured in the Representation to be ‘at rest’, an example depiction of which I set out at Schedule 3 (‘Blank Representation’).
After considering submissions from the Owner’s Attorney, the Examiner maintained that the Citations meant the Design is not new and distinctive. On 19 April 2024, the Owner requested to be heard.
A hearing was scheduled and I invited the Owner to file any written submissions or evidence by 17 March 2025. On 17 March 2025, the Owner filed written submissions prepared by Lester Miller of Foundry Intellectual Property Pty Ltd.
On 18 March 2025, I heard the matter by teleconference. Mr Miller appeared on behalf of the Owner. 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 of the Owner’s submissions. This process is not a review of the examination, though I do refer to the examination history of the Design in determining this matter.
The Citations
I should first note that I am satisfied that all the Citations were published in a document prior to the Relevant Date. I am satisfied that the Design, if considered ‘at rest’, is substantially similar in overall impression, thus not distinctive, when compared with the prior art base. This consideration includes the prior art with a priority date of 27 January 2021 and registered on 29 September 2021, shown in Schedule 2 to these written reasons.
Accordingly, if the Blank Representation is the appropriate construction of the Design at examination, it follows that the Design is not distinctive and must be revoked. Therefore, the core issue is one which has been addressed in Apple Inc (‘Apple’),[2] and more recently in DriV IP LLC (‘DriV’).[3] That is, whether the Design should be examined ‘at rest’ such that the pattern and textual matter appearing in the Representation is effectively ignored.
[2] [2017] ADO 6 (Hearing Officer Richards) (‘Apple’).
[3] [2024] ADO 3 (Hearing Officer Goldsworthy).
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. As a result of this practice, images that may be displayed on a screen when switched on, are not visual features for the purposes of any comparison with prior art.[4] The basis for this approach was explained in 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.
Discussion
[4] Designs Examiners’ Manual of Practice and Procedure, Part 9.4.
Relevant legislation and materials
Under the Act a person may file an application in respect of a design.[5] An 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]
[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.
I need not set out its contents in full, though I note that these written reasons 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 law 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, 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’ and the Australian Government responded to this recommendation with an unqualified acceptance.
I am satisfied that the ALRC Report is an extrinsic material which may 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’
The core of the Owner’s submissions is that the word ‘product’ in the Act includes non-physical matter, such as a graphical user interface (‘GUI’). Indeed, the Owner submits that a GUI as such is registrable. Whilst the Owner did not provide specific submissions directed at the issue of the practice of ‘at rest’ examination for the design in relation to ‘a display screen with graphical user interface’, it appears to suggest that based on its conclusion that GUI is registrable it would therefore be improper for a registered design that specifies the product as being, for example, a GUI to have visual features disregarded, because the GUI’s appearance is unaffected by whether the product is ‘at rest’. The Owner then appears to submit that more broadly the examination of designs should not be conducted ‘at rest’. Similar submissions occurred in DriV.
As in DriV, the Owner’s submissions require me to assess whether, for example, a GUI, would be registrable under the Act in its own right. The delegate in Apple also briefly dealt with this kind of submission about the meaning of the word ‘product’ noting:
Another strand to this submission amounts to a more ambitious claim – that screen displays are products in their own right. I do not need to deal fully with this in these reasons, since the product to which the design relates does not claim to be a “screen display” or the like but a “display screen”. I would only say here that, an ordinary reading of the term “screen display” seems to relate only to images, much the same as would be the case for “a projected image”. While both refer in a way to a means through which those images will manifest (a screen and a projector respectively), but neither squarely relate to a product of manufacture. Both of those terms make a claim to visual features in relation to any number of different products. Since designs under the Act must be in relation to a product,[9] a “screen display” would not be registrable for want of appropriate subject matter.[10]
[9] Section 8.
[10] Apple (n 2) [19].
This result also appears to be consistent with the decision in Microsoft Corporation[11] where the delegate decided 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.[12]
…
In my view, the present design does not disclose a product bearing visual features. It only discloses visual features…[13]
[11] [2008] ADO 2 (Hearing Officer Herald).
[12] Ibid [14].
[13] Ibid [16].
The Owner submits that there is a broad meaning for the word ‘product’ under the Act. The definition of the word ‘product’ as appearing in the Macquarie Dictionary includes, ‘a thing produced by any action or operation, or by labour; an effect or result’.[14] The Owner also refers to the Oxford Dictionary definition of ‘manufacture’ which is ‘making something on a large scale… by manual labour’ and submits that ‘GUI building would fall within this definition’.[15]
[14] Macquarie Dictionary (9e, 2023) ‘product’.
[15] Owner’s Written Submissions, [21]-[22].
The Owner refers to Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd, where 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’.[16] Justice Tamberlin noted that it is ‘also important to ensure that the result contended for reasonably arises from the language selected by parliament’.[17]
[16] [2000] FCA 1273, [65] (‘Aristocrat Leisure’) referring to Sega Enterprises Ltd v Galaxy Electronics Pty Ltd [1996] FCA 761 (Burchett J).
[17] 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).
The starting point for determining the legal meaning of words in an enactment should be the words themselves and their ordinary meaning.[18] There should be reasons to depart from the literal or grammatical meaning of a provision and I should strive to give meaning to every word of a provision.[19] When 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.[20]
[18] 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).
[19] Project Blue Sky ibid [71] and [78].
[20] AIA s 15AA.
I must construe the words of an enactment in their legislative setting and in accordance with the principles of statutory interpretation and start with the language in the Act. 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’.[21] 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.
[21] Emphasis added.
Within the definition of product in s 6, is the word ‘manufacture’ and the phrase ‘hand made’. One 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’.[22] The phrase ‘hand made’ is defined therein as ‘made by hand, not machine’.[23] The High Court of Australia in National Research Development Corporation v Commissioner of Patents (‘NRDC’) commented that the word ‘manufacture’ as ‘a word of everyday speech generally’ conveys the idea of making tangible goods.[24] The High Court in NRDC was considering the effect of the words ‘manner of new manufacture’ for the purposes of the Patents Act 1952 (Cth).
[22] Macquarie Dictionary (online, accessed 17 June 2025) ‘manufacture’.
[23] Macquarie Dictionary (online, accessed 17 June 2025) ‘handmade’.
[24] [1959] HCA 67, [14] (Dixon CJ, Kitto and Windeyer JJ) (emphasis added).
The Owner’s Attorney notes that in NRDC the High Court, whilst mentioning the ordinary meaning of the word ‘manufacture’, took an expansive approach to the interpretation of the words of the patents legislation. I agree. However, patents law also has its own limits as to patentable subject matter, by the effect arising from the words of the legislation. Moreover, what I am concerned with in this matter is the meaning of the words specifically in the enactment at hand. That is, the words of the Act not the patents legislation. The Act and its words have a different legislative context to the words of the patents legislation considered in NRDC. That legislative context for the patents legislation included the definition of the word ‘invention’ by reference to those composite words ‘manner of new manufacture’. Relevant also were the principles that developed over time in respect of those words. What is notable about NRDC is that the High Court’s approach was to consider the ordinary meaning of the relevant words and then move to consider the effect of the relevant words in their own legislative setting, including the surrounding words and the principles that had developed over time in relation to s 6 of the Statute of Monopolies 1624. I proceed from here to consider the language and effect of the words of the Act.
At the hearing the Owner’s Attorney summarised the meaning of the word product as follows:
a. GUIs are a thing;
b. GUIs are built;
c. built things are made by hand or manufactured.
The Owner’s Attorney also submitted that GUIs are ‘hand made’ because they involve a person clicking and/or dragging elements appearing on a screen leading to the building of a GUI.
All ‘built things’ do not necessarily fall within the meaning of the words ‘manufactured or hand made’ as occurring in the Act. The interpretation suggested by the Owner would amount to giving meaning to the words ‘manufactured or hand made’ by the properties inhering in another word, ‘build/built’. More conceptual things, for example, a strategy, an argument, a principle, a business process, or a method of construction can in a broad sense be said to be ‘built’. However, that does not mean such things are necessarily protectable under the Act or qualify as a product. Whilst I agree that persons producing GUIs might say they are a ‘GUI builder’; that ‘a GUI is built’; or that such persons are working, for example, on a ‘software build’, in everyday speech generally a person would not say that they ‘manufacture’ GUIs. Nor would a person naturally prefer to say that these are made by hand in such a way as argued by the Owner. These things are likely to be referred to as having been ‘created’, ‘coded’, ‘authored’, ‘designed’ or perhaps ‘built’. Such words were not chosen by the legislature. The meaning of the words ‘manufactured or hand made’, in the context of both s 6 and the rest of the Act, appear to be confined to the making of a physical thing, involving a working of a material into a physical form for use.
The meaning of a provision in an enactment must be determined by reference to the language of the instrument viewed as a whole.[25] Here this includes the subsections in s 6 and all other sections of the Act.[26] 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. Further, the definition for ‘complex product’ in s 5 includes the requirement that this type of product be capable of both disassembly and re-assembly. 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 a GUI, would interact with these subsections is not clear. All these subsections relate to subject matter which involves, for example, the assembly of physical things. This language reinforces the interpretation that for the purposes of the Act ‘product’ refers to a physical thing.
[25] Project Blue Sky (n 18) [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).
[26] AIA s 13.
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 the appearance of potentially multiple products.[27] This is because a screen display, such as a GUI, is not physical and thus can be incorporated into any number of different products. I also note the comments of the High Court in Malleys Ltd v J W Tomlin Pty Ltd that it is ‘not the function of design to indicate a process of manufacture; indeed, anything amounting to a method of construction that would permit differences of shape spells invalidity’.[28] Indefinitely dimensioned extrusions under the Designs Act 1906 (Cth) (‘1906 Act’),[29] for example, also faced problems in qualifying as protectable subject matter, which required the amendment of that legislation to specifically include such things.[30] Things with indefinite dimensions are now controlled by the definition of s 6(3) of the Act. 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 meaning of the word ‘product’ again does not refer to non-physical things which can be incorporated across multiple products or designs of indefinite appearances.
[27] Apple (n 2) [19].
[28] [1961] HCA 77, [5] (Taylor, Menzies and Owen JJ).
[29] Bondor Pty Ltd v National Panels Pty Ltd [1991] FCA 428 (Black CJ, Spender and Gummow JJ); Brisbane Aliminium Fabricators & Supplies Pty Ltd v Techni Interiors Pty Ltd [1991] FCA 805 (Pincus J).
[30] Industry, Technology and Commerce Legislation Amendment Act 1992 (Cth). See also, 1906 Act ss 18(2), (3) and (4).
The language in the provisions of the Act outside of s 6 also confirms 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.[31] These words generally appear to refer to things which permit physical connection.[32] Overall, the language of the Act is currently cast to apparently concern physical things to the exclusion of non-physical things.
[31] AIA s 15AB(1).
[32] Aristocrat Technologies Australia Pty Limited [2021] ADO 1, [28] (Hearing Officer Barbey) (‘Aristocrat Technologies’).
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 would not be included in that word.[33] Furthermore, to the extent that there is ambiguity about the definition of ‘product’, it may then also be appropriate to have recourse to extrinsic materials.[34] These extrinsic materials include the Explanatory Memorandum to the Designs Bill 2003 (‘EM’) and the ALRC Report which support such an interpretation.
[33] AIA s 15AB(2)(a).
[34] 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’.[35] This statement indicates that the definitional role of s 6 involves a level of exhaustion 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.’[36] All of these are examples of things with a physical form and bearing visual features.
[35] EM, 26.
[36] 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.[37] The ALRC Report adds that, for example, the water jet of a fountain would be excluded from the then draft definition of product.[38] This is despite the direction of the flow perhaps being a result of human intervention. 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, within the word ‘product’ and refers to the reasons in Re Applications by Comshare Incorporated.[39] I view the ALRC Report as a strong signpost 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 general discussion in 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.’[40]
[37] Recommendation 10.
[38] ALRC Report, [4.9].
[39] [1991] ADO 2 (Hearing Officer Welsh). See also, ALRC Report, [4.30]-[4.32] and Recommendation 20.
[40] Aristocrat Technologies (n 32) [18] (citations omitted).
Albeit concerning different provisions and a different context, in AMP v Utilux, Lord Reid observed:
Parliament has been concerned to see that the originator of a profitable design is not deprived of his reward by others applying it to their goods. But it has not given protection under the [applicable enactment] to everything which could be called a design. To be protected the design must come within the definition. Designs which do not come within this definition may or may not be protected by other legislation.[41]
[41] [1972] RPC 103, 108.
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’, and the word ‘design’, which refines the subject matter qualifying for protection.[42] This is specifically confirmed by the text of the Act, the EM and ALRC Report. Section 6 in connection with the other provisions of the Act has a specific role in controlling the subject matter of protections offered under the Act.
[42] 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/Lauren Company LP v Ziliani Holdings Pty Ltd [2008] FCAFC 195, [54] (Black CJ, Jacobson and Perram JJ) the Full 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 Pty Limited v Fewstone Pty Ltd [2014] FCA 321, [451] (Dodds-Streeton J).
For completeness I note that the Owner’s Attorney also referred the Examiner to the Australian Commission on Intellectual Property’s 2015 Final Report to the Australian Government (‘ACIP Report’). The Owner submits that this found that, ‘there is nothing in the legislation which requires that visual features be observable in the “resting” state or when unconnected to electricity. IP Australia should reconsider, and abandon, this aspect of its practice in assessing the validity of designs.’ I note that the ACIP Report does not directly address any of the issues outlined in past decisions of the office concerning the practice of ‘at rest’ examination.[43] I note also that the references of the Owner to current proposals for reform of the current legislation to cover matter as appearing on a screen also do not assist regarding the current legislation.
[43] See also the discussion of this aspect of the ACIP Report and later government actions in Apple (n 2) [29]-[31].
For these reasons, my reading of the word ‘product’ as appearing in the Act is that it does not refer to a GUI in the way asserted by the Owner. Accordingly, this argument does not assist the Owner to the extent that the current practice of the Designs Office is that the Design should not be examined ‘at rest’.
Conclusions on the issue of ‘at rest’ examination
On an ordinary reading of the Act, the GUI as depicted in the Representation would not amount to visual features ‘of’ the product as specified. I am satisfied that the Design should be examined ‘at rest’. When examined accordingly the Design is not distinctive when compared to, at least, the prior art which was registered and so published on 29 September 2021.
For completeness I also note that the SoND when read together with the product name and Representation do not assist in reaching any other conclusion in this matter.
Decision
I am satisfied that examination of the Design ‘at rest’ is the correct approach in this matter. Further, because the Design is substantially similar in overall impression to at least one of the Citations the Design was not distinctive at the Relevant Date and must be revoked.
Absent an appeal, the Design 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
17 June 2025
Schedule 1
Schedule 2
| Prior art | Publication date |
| 29 September 2021 | |
| 6 November 2017 | |
| 7 January 2022 | |
| 23 January 2021 | |
| 9 February 2019 | |
| 13 August 2015 |
Schedule 3
0
17
0