Case: Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 40
Outcome: cited
a result of difficulties in interpretation and application, the Australian Law Reform Commission ("ALRC") recommended that the "innovation threshold" in s 17(1) of the 1906 Designs Act be replaced by the two-step "new and distinctive" test now found in the 2003 Designs Act: Report No 74, Designs (1995) (the "ALRC Report"). The ALRC addressed the issue in the following terms: 5.8 Meaning of distinctive. Distinctiveness is a term used by the courts to express the quality that a design must have to differentiate it sufficiently from previously published or used designs. For example the courts have said for a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character: [ Dart Industries Inc v Decor Corporation Pty Ltd (1989) AIPC 90-569 , 38, 975. In another case, relating to furniture design, it was said that design in such a field is a subtle thing and, provided it is distinctive to the trained eye, I think that registration should not be denied in view of the element of subtlety which is involved in the combination of old features in a particular way and the manner in which they are combined: D Sebel &amp; Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224, 227; approved in Australian Building Industries Pty Ltd v Woodman McDonald (Glass) Pty Ltd [1986] AIPC 90-302.] Other cases have spoken of 'the overall distinctive appearance of the registered design' [ Firmagroup Australia Pty Ltd v Byrne &amp; Davidson Doors (Vic) Pty Ltd (1987) AIPC para 37, 634, 638] the ridging or grooving of a design being 'sufficiently bold and distinctive in its appeal to the eye', [ Aluminum Specialities Pty Ltd v Ibis Building Products Pty Ltd ( 1982) 42 ALR 127 , 133] a shape or configuration that is 'distinctly different' from that in respect of which a design is registered [ Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd [1989] AIPC para 90-616, 39, 334, 348] and a design that must be 'distinct and must present an appearance that strikes the eye as being different' [ Fisher LJ &amp; Co Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611] ... 5.9 Grounds for adopting the new test. The [ALRC] favours the two tiered approach and the distinctiveness test for several reasons. The distinctiveness test is a design approach. It recognises the importance of design in product differentiation. It is consistent with the way in which designers work. It will discourage the tendency to focus narrowly on 'one individual specific appearance' and to count up the differences between designs. It incorporates in a single concept many of the qualities sought in other unsatisfactory expressions such as 'judged by the eye', 'eye appeal', 'immaterial detail', 'trade variants', and 'obvious adaptation'. It is a more focussed test for assessing the degree to which a design is an advance on the prior art. It allows a different prior art base to be defined for novelty as against distinctiveness. This is useful because the aim with the novelty test is to exclude identical designs but the aim with the distinctiveness test is to recognise innovation. It directly addresses the need for greater differentiation between designs, both for registration and infringement purposes, that was evidenced by submissions, consultations and the [ALRC's] survey of design users. (Some formatting altered; footnotes moved to text in brackets.) The ALRC Report formed the basis of the 2003 Designs Act: Explanatory Memorandum to the Designs Bill 2002 (Cth) at 1. Under the 2003 Designs Act, a design is distinctive "unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design" as it existed before the priority date of each Design: s 16(2) (emphasis added). As noted earlier, that test has an important temporal aspect: anything which occurs after the priority date (the filing date of the application for registration) is irrelevant: s 16(3). Thirdly, the judgment is an objective one. In assessing substantial similarity in overall impression, the standard to be applied is that of the informed user - namely, the court standing in the shoes of a notional person who is familiar with the product to which the design relates, or products similar to the product to which the design relates: s 19(4); Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 ; see also Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 , 408-409. That informed user , in assessing substantial similarity in overall impression: gives more weight to similarities between the designs than to differences between them: s 19(1); considers the state of development of the prior art base for the design: s 19(2)(a); considers the particular visual features of the design described in the statement of newness and distinctiveness in the context in which they appear: s 19(2)(b) and (c); if only part of the design is substantially similar to another design, considers the amount, quality and importance of that part in the context of the design as a whole: s 19(2)(c); and considers the freedom of the creator of the design to innovate: s 19(2)(d).