In this article, we look at a recent Australian decision relating to the revocation of two registered Australian designs after a request for examination by the owner which considers the doctrine of “examination at rest”.

It confirms the Australian position that transient elements are not capable of registration as a design and instead, only permanent features in “at rest” states can be protected. (DRiV IP, LLC [2024] ADO 3 (3 October 2024).)

Background

Under the Australian Designs Act 2003 (Cth) (the Designs Act), the overall appearance of a product resulting from one or more visual features of the product can be registered as a design. Further, to enforce a registered design, a request must be made for it to be examined and certified.

The current practice of the Designs Office in Australia 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 off.

The upshot of this is that images displayed on a screen when a product is switched on, are not visual features of a product for the purposes of any comparison with prior art. 

Registered Designs

The registered designs in question in this decision were design numbers 201914251 and 201914249, both being for an “electronic device including a display screen; display screen (Designs) in the name of DRiV IP, LLC (DRiV).

The Designs included the following statement of newness and distinctiveness (SoND): 

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. 

This is best seen in this representation included in the Designs:

On 3 April 2023, DRiV sought examination of the Designs. 

Examiner’s decision

When examining the Designs, the Examiner considered the products pictured in the representations of the Designs to be “at rest”. That is, with a blank screen such as the image pictured below:

The Examiner took the view that the Designs were not new and distinctive (which is necessary for design validity). The Examiner issued objections in relation to both Designs on the basis that there were several other conflicting designs published prior to the priority date of the Designs (Citations), including the following:

DRiV requested a hearing and submitted 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. DRiV also proposed amendments to the product named to address the Citations.

Hearing officer’s decision

The hearing officer held that the Designs, considered “at rest”, were substantially similar in overall impression, therefore not distinctive, when compared with the prior art base. 

Importantly, the hearing officer held that the Designs as filed did not disclose a product bearing visual features, rather they only disclosed visual features. The hearing officer also noted that the SoND, together with the product name and representations of the Designs did not assist in reaching any other interpretation.

The hearing officer also considered that the proposed amendments were not sufficient to overcome the difficulties the Designs faced because of the practice of examination of designs “at rest” and sought to alter their scope by the inclusion of matter that was not disclosed in the original design applications or representations.

Ultimately, it was held that if the “at rest” blank screen is the appropriate construction of the Designs at examination, the Designs were not distinctive and must be revoked.

This approach has been followed since the Australian Designs Office decision in Apple Inc [2017] ADO 6 (14 June 2017), where it was found that visual matter shown as having been displayed on the screen is not a visual feature which is of the product. 

Interestingly, in the current case, consideration was given to the 74^th report of the Australian Law Reform Commission from 1995 (ALRC Report) that examined design protection in relation to screen displays. One of the report’s recommendations was that screen displays should not be able to be protected as designs, as the visual appearance of the monitor or other computer hardware is the product at rest, not in use.

The hearing officer was satisfied that the ALRC Report is extrinsic material which could be considered in the interpretation of the Designs Act.

Comment

While there is a review of the Designs Act on foot, with a proposal to expand the scope of design registrations to virtual designs, that may change this position, as it stands transient features only visible when a product is switched on, cannot be registered as a design in Australia.