Last week’s blog covered the assessment of multiple embodiments, and what this means to so-called multiple design applications and single design applications. Specifically, the drink bottle in last weeks’ blog is an example of multiple embodiments depicted by different portions illustrated in dashed lines. Multiple embodiments of the product can also be depicted by illustrating the product in different positions, such as when the product can move and has functionality.
Duplicating what has happened overseas in Australia is often not an option, or is not the best option, particularly when obtaining separate registrations for each embodiment is not commercially viable. To get the most out the Australian design registration, title and functionality are two things to consider, and here is why.
What is it about functional features?
One of the unique aspects of Australian design law is that a visual feature may or may not serve a functional purpose (section 7(2) of the Designs Act). A single registration can therefore be obtained of a product that is illustrated in different positions and performing different functions. This provides a significant opportunity to consolidate the number of registrations required to a smaller number that focuses on the important positions of the product. The important positions are typically those that are seen in its different modes of use.
For example, the opened and closed positions of a portable computer can be protected in a single registration. This can be particularly useful when the newness of the design is a combination of visual features on the inside and the outside of the product.
If the visual features of either the inside or outside are less important to the new design, these features can be shown in dashed lines whilst still showing that the product moves between open and closed positions.
Functionality can also be depicted by the product being illustrated in assembled and exploded configurations, such as the salad spinner below.
As the visual features resides in the way that the components of the salad spinner fit together, it is not necessary to illustrate six views of each component.
The functionality of the joints of a wooden puppet can be illustrated in a single design registration. Photographic representation such as those set out below can form the subject matter of a single design registration. This is particularly useful when the mobility of the joints contributes to the newness of the design.
The scope of a registration that contains functionality is determined by what is shown in the drawings, namely functional features and non-functional features. To avoid overly limiting the scope of the registration, when it comes to functional features, the best approach is to illustrate a combination of positions that:
i) could contribute to the novelty of the design, and
ii) would be positions that a competitor’s product is likely to have.
Should the title be changed to suit Australia?
Figures 1 and 2 are typical examples of two embodiments of a CHAIR that are the subject of a single design application initially filed outside of Australia. The scope of protection provided by the figures is clear from the dashed lines. Moreover, in some jurisdictions, but not Australia, the dashed lines in Figure 2 could be disclaimed.
So how can equivalent protection be achieved?
One approach is to use CHAIR as the title in separate registrations of Figures 1 and 2, and to call for the dashed lines in Figure 2 to be afforded less weight than the solid lines. However, this does not equate to disclaiming the part shown in dashed lines.
To achieve equivalent protection, the title of the product in Figure 2 could be instead be BACK REST AND SEAT so that the focus is on the product shown in solid lines only. The base and subframe of the CHAIR shown in dashed lines would, in this situation, constitute environment features, which do not form part of the named product and therefore ignored from the scope of the registration.
In other words, protection of equivalent scope can be achieved in Australia by changing the title.
The title can be changed to identify any product, provided the product is something that is manufactured or hand made. Section 6 of the Design Act prescribes that the title of the product can be any part of a complex product, such as a back rest and seat of a chair which is made separately from the frame and subframe.
At BOSH IP we aim to get the most out of the design registration system with a view to the best practice in Australia and the commercial relevance of the design.
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